“Faster, Mommy! Faster, faster!” Those words were regularly uttered by my son when he was younger whenever we spent time on a ski hill, at an ice rink, or even just running around the neighbourhood.
Speed demon that he was (and still is), he would no doubt be encouraged by recent measures taken by the Canadian Intellectual Property Office (CIPO) to accelerate the processing of trademark applications.
As anyone who has filed such an application within the past few years knows, the pace of examination had slowed considerably. In many ways, Canada has been a victim of its own success in being one of the countries most favoured by foreign applicants who wish to have their International Registrations recognized here. The volume of applications entering Canada through the Madrid Protocol governing International Registrations has caused a deluge of work for CIPO’s examiners, and a backlog in the processing of all applications, particularly those filed domestically.
CIPO has apparently taken criticisms of the slow pace of examinations to heart and has introduced Practice Notices outlining when trademark applications can be considered for expedited examination, as well as other measures aiming to speed up the examination process in general.
In a nutshell, a Canadian trademark application can be “fast-tracked” if:
- It falls within one or more criteria for expedited examination set out in Practice Notices dated December 14, 2020 and May 3, 2021.
- It contains goods and/or services selected directly from the CIPO Goods and Services Manual.
In either case, applicants are well advised to seek advice from a qualified trademark professional to determine whether or not the Practice Notices apply (and how to file requests pursuant to these Notices), as well as to determine whether or not it is in the applicant’s best interests to choose descriptions of goods/services from the CIPO Manual. In many cases, a customized list of goods/services provides better protection.
Practice Notice pertaining to trademarks related to COVID-19
As of December 14, 2020, a trademark application associated with medical goods or services related to COVID-19 qualifies for expedited examination if one or more of the following criteria are met:
- A court action regarding the trademark in issue is underway in Canada. This encompasses a situation where the trademark owner is enforcing its mark through court proceedings in Canada. (The wording is broad enough to encompass a situation where the trademark owner is a defendant in an action involving trademark infringement or passing off of a third party trademark, but it is difficult to see the policy reason supporting expedited examination of the application in such a situation.)
- The trademark applicant is in the process of combating counterfeit products at the Canadian border in respect of the trademark in issue. This involves filing a Request for Assistance with Canada Border Services Agency to stop the import or export of counterfeit goods.
- An approval for the use of the goods/services listed in the trademark application has been submitted to or obtained from Health Canada under the same name as the trademark. Such approvals include Medical Device Licenses, Investigational Testing Authorizations, and Notices of Compliance.
Practice Notice pertaining to all trademark applications
On May 3, 2021, CIPO released another Practice Notice stating that all trademark applications (not just those related to COVID-19) will qualify for expedited examination under the same circumstances as #1 and #2 above (court action or combating counterfeit products). In addition, expedited examination will be considered if:
- The applicant requires registration in order to protect its intellectual property rights from being severely disadvantaged on online marketplaces. This wording is broad and somewhat vague, and it remains unclear as to what specific circumstances would qualify.
- The applicant requires registration to preserve a priority claim following a request by a foreign IP office.
The Practice Notices set out a specific procedure to be followed in making requests for expedited examination, including a requirement that certain information be set out in an affidavit or statutory declaration. It is important to engage a qualified trademark professional for any such requests in order to ensure compliance with the stipulated procedure.
General measures to improve examination timelines
Apart from these Practice Notices, CIPO has also issued the following general guidelines on May 3, 2021 to speed the processing of all applications:
- Applications which contain goods/services selected directly from CIPO’s Goods and Services Manual will be examined more quickly. Note that there is an art to choosing goods/services which accurately reflect the applicant’s business while conferring broad protection, and a qualified trademark professional can best assist with determining whether or not to use the goods/services directly from CIPO’s Manual.
- Examiners will no longer provide examples of acceptable amendments to lists of goods and services, unless the amendments are simple enough to be addressed through a telephone amendment (as opposed to a written submission). This again points to the importance of seeking assistance from a qualified trademark professional.
- Fewer examination reports will be issued. Thus, it can be expected that if an objection is issued and if the applicant does not successfully overcome the objection the first time (through filing a revised application and/or submitting legal arguments), the application will be refused more readily. The practice until now has been for examiners to issue multiple sequential objections maintaining the same grounds.
While the goal of speeding up the trademark application process is laudable, quality of examination needs to be preserved. CIPO expressly recognizes that these efforts are “to improve timeliness while remaining focused on quality as a key priority”. It remains to be seen whether the balance between quality and speed will, in fact, be achieved. In the meantime, anyone who uses the Canadian trademark system is well advised to retain a qualified professional to assist in navigating this new landscape. We will then see whether we need to be saying, “Faster, CIPO! Faster, faster!”, or whether the backlog will gradually ease over time.