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:
- 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.
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.