I Can’t Wait! Speeding Up Processing of Your Canadian Trademark Applications

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November 03, 2022

Canada continues to make news (the wrong kind) when it comes to the slow pace of its examination of trademark applications. Despite repeated promises by the Canadian Intellectual Property Office (“CIPO”) to speed things up, the problem is only getting worse.  However, there are some promising signs.

Use of List of Pre-Approved Goods and Services

In May 2021, CIPO announced certain measures to speed up its examination of applications.

One measure involved the acceleration of examination of applications that used only the pre-approved descriptions of goods and services contained in the CIPO Goods and Services Manual (the “Manual”). The reason that CIPO gave for this initiative was that much of its time spent examining applications involves a determination by it as to whether the goods and services in an application are described in specific and ordinary commercial terms. It would be fair to say that this is a problem of CIPO’s own making since it conducts what is perhaps the strictest examination of goods and services of any national trademarks office regardless of the effect that this has on its backlog of applications.

Since its introduction of this initiative in May 2021, CIPO has indeed given preferential treatment to applications that use only the pre-approved terms in the Manual. This preferential treatment has, however, dramatically delayed the examination of applications that do not entirely use the pre-approved terms.

For example, on October 27, 2021, CIPO reported that the filing dates of applications that were currently in examination (i.e., that were not yet the subject of a first office action or approval by CIPO) were as follows:

• December 19, 2018 for applications not using solely the CIPO pre-approved goods and services;
• June 10, 2019 for applications using solely the pre-approved goods and services; and
• June 18, 2020 for Madrid Protocol applications.

One year later, on October 27, 2022, CIPO reported that the filing dates of applications that were currently in examination were as follows:

• February 22, 2019 for applications not using solely the CIPO pre-approved goods and services;
• January 4, 2021 for applications using solely the pre-approved goods and services; and
• May 17, 2021 for Madrid Protocol applications.

In other words, in the last twelve months, CIPO examined only two months’ worth of applications that do not exclusively use the pre-approved list of goods and services contained in the Manual.

By way of contrast, in those same twelve months, CIPO examined approximately 18 ½ months’ worth of applications that solely use the pre-approved goods and services from the Manual.

Expedited Examination

In May 2021, CIPO also announced that it would accept requests for expedited examination in the form of an affidavit or statutory declaration showing that one or more of the following criteria are met:

• a court action is underway, or expected, in Canada with respect to the applicant’s trademark in association with the goods and/or services listed in the application;
• the applicant is in the process of combating counterfeit goods at the Canadian border with respect to the applicant’s trademark in association with the goods and/or services in the application;
• the applicant requires a registration in order to protect its intellectual property rights from being severely disadvantaged in online marketplaces; or
• the applicant requires registration of its trademark in order to preserve its claim to priority within a defined deadline, following a request by a foreign intellectual property office.

When such a request is filed and accepted by CIPO, it typically reviews the request within a week and, if it accepts the request, conducts a substantive examination of the application within one or two weeks. It is to be noted that this expedited examination takes place regardless of whether the application solely uses the pre-approved list of goods and services from the Manual.

Recommendations

In view of the above, what is an applicant to do in order to speed up the processing of its applications in Canada?

First, where possible, an applicant should consider using solely the pre-approved list of goods and services when it files an application or, in the case of an existing application, consider amending its goods/services. Of course, this is not always possible or desirable since there are many instances in which the pre-approved terms in the Manual do not adequately describe the full scope of an applicant’s existing or intended use of its trademark.

Additionally, in the case of an existing application, the goods/services cannot be amended so as to broaden their scope when compared to the application as filed. Therefore, the terms in the Manual can only be substituted for the goods/services in an existing application where doing so will not broaden the scope of the goods/services in the application as originally filed.

If, however, an applicant can maintain suitable coverage for their trademark through a combination of deletions and amendment of the goods/services in its application, it may wish to do so in order to accelerate examination.

Second, CIPO is receptive to considering additions to the Manual. Therefore, an applicant may wish to speak with its Canadian agent to discuss whether it is advisable to ask CIPO to add one or more goods/services to the Manual. CIPO typically responds within two to four weeks to a request to add a term to the Manual. This option can be particularly useful where a trademark owner uses the same or similar goods and services for multiple applications.

Third, an applicant should give serious consideration to whether it qualifies for expedited examination (for example, because it requires a registration in order to enforce its trademark rights on an online portal). The benefits of this option are the greatest for newer applications. For example, the owner of a recently-filed application who qualifies for expedited examination can have its application examined within a matter of weeks from filing versus having to wait several years for the application to be examined in due course.

It is to be hoped that CIPO will, at some point in the near future, start to reduce its backlog of unexamined applications through a combination of additional examiners and other measures. In the meantime, applicants would be well advised to speak with their Canadian agents regarding steps that they can take to speed up examination of their applications.

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