Canadian Trademarks Office Introduces “Pre-assessments” to Try and Curb Registration Delays

The Trademarks Office (the “TMO”) of the Canadian Intellectual Property Office (“CIPO”) recently announced it intended to keep attempting to curb out-of-control trademark registration delays, this time by introducing the automated analysis of applications as to listings of goods and services as well as to Nice classification.

From now on, applications prepared and submitted using the standard list of goods and services (that of the Manual of products and services) will essentially be given priority, over other application where associated products and services were included by free-form text or copied in from other sources. If the CIPO can confirm that an application used the standard listing and that the Nice classification of those types of items is consistent, then it will issue a letter to the applicant confirming that the application is being (somewhat) fast-tracked by being placed at the head of the cue, for purposes of examination. In the normal course of things, this will accelerate the speed at which applications using the pre-approved list of goods and services can reach registration, in Canada.

If, however, the automated analysis reveals inconsistencies (or failure to use the pre-approved list) or issues relating to the Nice classification, then the TMO’s letter will rather invite the applicant to either refile or amend the application, without waiting for examination.

To increase the proportion of applications filed using the standard descriptions, the TMO has been consistently increasing the number of entries in the Manual of products and services, which now contains more than 100,000 entries.

Though the TMO’s announcement terms this part of the new process “pre-assessment”, one should note it’s not like we can get CIPO’s input before filing an application. Rather, a new (automated) step has simply been introduced, between filing and the actual examination by a human being.

Though CIPO’s goal in implementing this change is to curb typical trademark registration delays, it remains to be seen what impact this change will have on the actual delays we’ve been experiencing in the last couple of years. This week, for example, I received such a letter as to an application I filed back in 2019 -even though this application might now be placed on top of the pile, even assuming examination is done quickly and no issue is raised by the examiner, the trademark registration at issue will have taken 3 years, not exactly something we can call timely, let alone fast.