New Measures to Improve Timelines at the Canadian Trademark Office
Written by: Dr. Angela Keuling, Patent Agent
Trademark applicants in Canada have been facing long delays between filing and registration, often waiting upwards of 18 to 24 months just to receive a first Examiner’s Report. However, the Canadian Trademark Office recently announced several new measures to reduce wait times and improve the timeliness of the trademark examination process.
Previously, Canadian trademark applications were only examined in the order in which they were received. Now, the Canadian Trademark Office will accept requests for expedited examination of trademark applications if one of the following circumstances apply:
- 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.
If the request is accepted, the Trademark Office will examine the application “as soon as possible”. However, applicants who receive expedited examination should be aware that requesting an extension of time, or missing a deadline, could result in the loss of this advantage.
Faster Examination for Applications with Pre-Approved Goods and Services
Examiner’s Reports are often issued with objections to the description of goods and services. Going forward, trademark applications will be examined more quickly if they only include pre-approved goods and services descriptions. A searchable list of such goods and services can be found in the Goods and Services Manual.
To this end, the Trademark Office intends to expand the Goods and Services Manual with additional goods and services descriptions in a variety of areas. Updates will be issued twice a month with new descriptions that have been added.
Fewer Examination Reports Prior to Refusal
Previously, examiners would often maintain an objection over the course of several Examiner’s Reports if the applicant continued to submit arguments but was unable to overcome the objection. Now, examiners will reduce the number of reports issued and will only be required to maintain a particular submission or argument once before issuing a final refusal. As a result, applicants are advised to submit a complete argument and/or amendment when an objection is first raised as there will be fewer opportunities to make subsequent submissions.
The Canadian Trademark Office is making a significant effort to reduce wait times and ensure issuance of timely and quality rights. It is increasingly important to prepare and prosecute your trademark application strategically to maximize the scope of the goods and services while also preventing delays. In addition, if registration of your trademark is particularly time-sensitive, it may be valuable to request expedited examination if any of the above scenarios apply.
The Trademark team at Parlee McLaws is happy to help you prepare and file your trademark application and help you navigate the examination process in a timely manner. Contact us to explore trademark protection further.