New Service Standards for Trademarks in Effect as of January 1, 2024

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The Canadian Intellectual Property Office amended its service standards for trademarks to better reflect the length of the current trademark registration process.

More Realistic Service Standards

New service standards for trademarks came into effect on January 1, 2024. The amendments significantly lengthen the previous service standards but will not result in a lengthening of the trademark registration process.

The Canadian Intellectual Property Office (“CIPO”) amended the service standards to better reflect examination time and increase predictability for applicants. The previous service standards were outdated and did not reflect actual application wait times. For example, prior to these amendments, the service standard for examination of an electronic application for the registration of a trademark was 2 weeks, but, in practice as of January 4, 2024, trademark applications faced up to a 55 month wait for examination.

The table below summarizes the amendments to the trademark service standards:

Item

Previous Service Standard

Service Standard as of January 1, 2024

CIPO will complete a first action for a request for giving public notice for a badge, crest, emblem, mark or armorial bearing

Within 8 weeks upon receipt of a compliant paper request and payment of the prescribed fee

Within 12 months upon receipt of compliant request and payment of the prescribed fee

CIPO will send a first action for an electronic application for the registration of a trademark

Within 2 weeks upon receipt of an electronic application that meets filing requirements and payment of the prescribed fee

Within 18 months from the filing date of a domestic electronic application that is filed using the pre-approved list of goods and services and payment of the prescribed fee.

Within 28 months from the filing date of a domestic electronic application that is filed without using the pre-approved list of goods and services and payment of the prescribed fee

CIPO will send a first action for an application for the registration of a trademark (paper)

Within 8 weeks upon receipt of a paper application that meets the filing requirements and payment of the prescribed fee

Within 28 months from the filing date of a domestic paper application and payment of the prescribed fee

Application to extend the statement of goods or services of a trademark registration

CIPO will send a filing notice within 8 weeks upon receipt of a paper application that meets the filing requirements and payment of the prescribed fee

CIPO will send a first action (approval or first report) within 28 months from the filing date of a paper application and payment of the prescribed fee.

Addressing Delays

CIPO is aware of the delays in the trademark examination process. According to its 2023-2028 Business Strategy, CIPO’s first priority is to deliver timely quality intellectual property services. The 2023-2028 Business Strategy sets out the ways CIPO is attempting to remedy the current trademark examination backlog, which include hiring more trademark examiners, leveraging IT solutions to bring process efficiencies, and expanding the pre-approved list of goods and services.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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