Canada’s Intellectual Property Firm

CIPO broadens the list of acceptable telephone amendments in trademark prosecution in Canada

Authored byMarie Christine Bernier

As previously reported, the Canadian Intellectual Property Office (CIPO) began an initiative to accept telephone amendments for simple prosecution issues in May 2020.  Considering the initiative’s success in helping CIPO improve efficiency and reduce its backlog, CIPO has decided to expand the list of issues for which telephone amendments are acceptable.

As of February 19, 2021, Examiners are now permitted to call the Applicant of a trademark application (or their Canadian trademark agent) directly to discuss the following deficiencies, instead of sending a formal Examiner’s Report:

  • Incorrect visual representation of the trademark
  • Incomplete translations and transliterations
  • Incorrect trademark type
  • Incomplete description
  • Simple issues with the statements of goods and services, including Nice classification
  • Incomplete mailing address

The Applicant (or their Canadian trademark agent) will then have five business days to respond to the Examiner’s telephone call or message. While the Examiner is not required to send a written Examiner’s Report to raise the above deficiencies, the Applicant (or their Canadian trademark agent) will still have to provide the Examiner with written confirmation to address these deficiencies.

If the Examiner has not received written confirmation from the Applicant or their agent within the five-day deadline, a formal Examiner’s Report will be issued.

We are hopeful that expanding the list of objections that can be communicated by telephone instead of a written Examiner’s Report will improve the efficiency of trademark prosecution in Canada.

For Madrid applications designating Canada, we note that the Canadian Trademarks Office will not communicate with a foreign representative.  If no Canadian agent is appointed, the Canadian Trademarks Office will contact the Applicant directly. Accordingly, where the Applicant does not wish to be contacted directly by the Canadian Trademarks Office, it is important to appoint a Canadian agent.

Smart & Biggar does not charge to be appointed as agent in Canada for your international trademark application and you can appoint us as the Canadian agent for your Canadian filings by completing this form

For more information on the expansion of the telephone amendments practice in Trademarks examination please contact a member of our Trademark 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.