We posted last year about the significant delays that were affecting the Canadian Trademarks Office. Unfortunately, these delays have continued, leading to wait times on first responses from the office to exceed 25 months on domestic applications. This has led to frustration for Canadian brand owners who are working to secure rights in their brand.
CIPO has acknowledged the delay and in a recent practice notice have announced that in the context of current wait times, CIPO will begin accepting requests for expedited examination in certain specific circumstances:
- A court action is expected or underway in Canada with respect to the applicant’s trademark in association with the goods or services listed in the application;
- The applicant is in the process of combating counterfeit products at the Canadian border with respect to the applicant’s trademark in association with the goods or services listed in the application;
- The applicant requires registration of its trademark in order to protect its intellectual property rights from being severely disadvantaged on online marketplaces; or
- The applicant requires registration of its trademark in order to preserve its claim to priority within a defined deadline and following a request by a foreign intellectual property office. Note that in such cases the request will need to be attached to the affidavit or statutory declaration.
This is in addition to a similar practice notice posted earlier in the pandemic in respect of expedited examinations of trademark applications associated with medical goods or services related to COVID-19.
These allowances for expedited examination are a change from the long-standing practice of the office to strictly examine trademark applications in order they were submitted. While the changes will be welcome for brand owners that may qualify for expedited examination under these categories, the new process may disadvantage response times on applications that do not qualify. That being said, we recognize that CIPO has acknowledged the overall problem with examination delay and are currently taking steps to bring the wait times down.
We will continue to review the CIPO status and will provide updates as new information arises. Our team at Cunningham Swan remains available to assist with any questions you have regarding your trademarks. Please send any inquiries you have to: [email protected].
