Earlier this week, we reported upon a new development for accelerating examination of Canadian trademark applications. However, the Trademarks Office has backtracked, imposing the previous, more onerous requirements for accelerating examination.
The delay from filing to examination in Canada for directly-filed trademark applications (as opposed to Canadian designations of International Registrations) is at an all-time high. The delay is now about 50 months from filing to examination.
Applicants looking to save time have two main options for accelerating examination in Canada.
The first option is to file an affidavit establishing certain criteria, such as: (a) a court action involving the mark is expected or underway; or (b) the applicant is in the process of combatting counterfeit products at the Canadian border; or (c) a registration is required for protection on online marketplaces, as explained in our previous article “Two ways to fast-track your Canadian trademark application”. In such circumstances, the time to examination is dramatically shortened to within a few weeks of filing of the affidavit.
The second option does not require an affidavit and is easier to take advantage of. Examination will be accelerated automatically (without the need for a specific request) from about 50 months to about 20 months when the goods/services in a trademark application are selected and explicitly uploaded from the pre-approved list in CIPO’s Goods and Services Manual, whether this is done in the original application or in an amended application. We outlined this option when it was introduced in our article “Fast Tracking Canadian Trademark Applications - Trademarks Office Publishes New Practice Notices to Reduce Examination Delays”.
Earlier this week, we reported that this second option had become easier to satisfy (where only a subset of the goods/services needed to be uploaded from the pre-approved list). However, that easier option was short-lived. The Trademarks Office has now advised that the previous requirements will once again apply. In particular, for examination to be accelerated under this option, all (and not merely a subset) of the goods/services in the application must be selected from CIPO’s pre-approved list.
For new applicants looking to accelerate examination of their trademark applications, it is good practice to consider the two options detailed above.
To learn more about these options for expedited examination, sign up for our upcoming webinar.
If you have any questions or would like further information, please contact a member of our firm’s Trademarks and Brand Protection team.
The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.