CIPO Ends Regional Courier Services Counters

The Canadian Intellectual Property Office (“CIPO“) recently elected to abandon its practice of allowing third parties, such as applicants and agents, to send correspondence and documents through regional counters, considered until now as “Designated Establishments”.

This change will be effective August 16, 2021.

Until now, those who needed to exchange with CIPO otherwise than by fax or electronically, could avoid having to resort to mailing stuff, by visiting a counter in certain major Canadian cities (e.g. Toronto, Calgary, Vancouver, etc.), in order to hand-in their documents. This will no longer be possible, once this change comes into effect.

This may happen, for example, to documents and evidence to be submitted in opposition or Section 45 proceedings which may not be sent by fax, due to the limitations of this antiquated technology. From now, if it gets to that, CIPO will expect use of registered mail or the like to send-in your documents.

On the bright side, CIPO is providing us with more and more links and forms which may now be used to communicate electronically and, hopefully, having to resort to obsolete means such as the fax and the mail.

Canadian Trademarks Office Updates Rules on Refusing Extensions of Delays

According to a new practice notice published by CIPO this week, the Trademarks Office (the “TMO“) will no longer grant extensions, as a matter of course, when an applicant needs more than 6 months to respond to an examination report.

As you may remember, until now, the TMO allowed applicants to request one (1) extension of delay, without having to show cause or provide any sort of real explanation. This allowed applicants to get 12 months to respond to the report of an examiner who objected to the registration of the mark at issue. From now, however, the TMO will require applicants to show the existence of “exceptional circumstances” if they want to obtain such an extension. No more of those quasi-automatic extensions, if you will.

No doubt tired of being stuck with average registration delays that we can’t seem to get under control, CIPO basically decided to opt for the homework approach: if the teacher gives you until Friday, you have until Friday -or the dog better really have eaten your homework.

The notice repeats some previously published typical examples of what may be considered “exceptional circumstances”, adding that the concept will apply not only to responding to office actions from an examiner, but also to cases where the TMO is asking a registrant to classify the goods/services associated with his/her/its trademark according to the Nice classification.

Interestingly, the notice also explains (as a similar notice did last year) that, due to a technicality, applicants should note that no governmental fees will generally be payable to request an extension to respond to an examiner report, as the delays at issue are not technically provided by the statute or its regulation. Good to know.

CIPO to Try and Accelerate its Processing of Canadian Trademark Applications: About Time!

This week, CIPO announced several initiatives meant to try and come to grips with the massive backlog that the Trademark Office is facing, along with allowing the fast-tracking of certain applications in the future. With typical delays of 2 to 3 years to obtain a trademark registration in Canada, let’s just say that it’s not a moment too soon.

CIPO made an announcement earlier this week entitled Measures to improve timeliness in examination outlining certain changes to the way examiners process trademark applications.

Essentially, the Trademark Office will now streamline somewhat how it handles applications, including by reducing the content of some of its letters, by processing in priority those applications using the standard list of goods and services (hmm, you think?) and limiting exchanges with applicants and their agents once an argument has been made and rejected.

CIPO also adopted a new Practice Notice this week entitled Requests for expedited examination which creates a new regime for expedited examination in certain cases. Until now, all applications were normally treated the same; This will change. Applicants can now submit a request to expedite their application, along with an affidavit (a statutory declaration) explaining how the applicant qualifies for the fast-tracking of its application.

Before we all start jumping for joy, you should note that such requests for expedited examination are only available in a limited number of situations, namely:

  1. 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;
  2. 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;
  3. The applicant requires registration of its trademark in order to protect its intellectual property rights from being severely disadvantaged on online marketplaces; or
  4. 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.

Such requests may be submitted, separately from the application itself, either by mail or fax (819-953-2476), by addressing the documents to: “Request for expedited examination, c/o Deputy Director, Examination Division,” etc. Not exactly high-tech stuff, but if it gets the job done, right?

It will be interesting to see how these new rules are handled and used in practice.

So as to end on another positive note, I’ll share an anecdote with you: This week, I received a call from an examiner who elected to call rather than mail me a formal letter and ask us to amend the list of products and services in a pending application. She could just as well have had a letter prepared and sent, but she called instead. As a result, we probably cut 4 to 6 weeks from the processing of this application.