Fast and Curious: CIPO Announces Steps to Speed up Trademark Examination
May 03, 2021
In recent years, the length of time that it takes the Canadian Intellectual Property Office (“CIPO”) to examine a trademark application has grown dramatically, so much so that it now typically takes approximately 2 years after the filing of an application for CIPO to examine it. Just a few years ago, the time between filing and examination was 8 months. To put this into context, in March 2019 the inventory of trademark applications awaiting first examination was approximately 73,000. In March 2021, that number was approximately 147,000. In order to address this steadily-worsening backlog, CIPO has announced some changes, effective as of May 3, that it hopes will speed up the process and provide some relief to applicants who are suffering prejudice owing to CIPO’s delays.
Improving timeliness of examination
As a time-saving measure, when examining an application that, in the examiner’s view, does not specify the goods and services in ordinary commercial terms, CIPO will no longer provide examples of descriptions that would be considered acceptable when issuing an examiner’s report. CIPO has also noted that applications that designate the goods and services using CIPO’s pre-approved list will be examined more quickly than applications that do not use this option.
Fewer examination reports prior to refusal
CIPO has also announced its intention to reduce the number of reports issued by examiners prior to final refusal. In order to achieve this goal, where an examiner has responded to a particular issue raised by an applicant, and the applicant subsequently submits further evidence on the same issue that is not persuasive on the examiner, CIPO will address the issue by way of a final decision to refuse the application rather than issuing a further examiner’s report.
In view of this change in practice, CIPO is encouraging applicants to advance all of their arguments in response to an examiner’s report at the first opportunity rather than in a piecemeal manner.
It is now also possible for an applicant to submit a request for expedited examination of its trademark application. CIPO had eliminated this practice several years ago. Now, such a request will be entertained by CIPO but must be supported by 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.
It is important to note that there is no requirement that an application be pending for any particular period of time before expedited examination can be sought. For example, it is possible for a trademark owner to file such a request in respect of a new application. This expedited examination procedure does not impact CIPO’s previously announced procedures to request expedited examination of trademark applications associated with medical goods or services related to COVID-19.
In a recent decision arising from an appeal of a decision of the Trademarks Opposition Board, the Federal Court commented on when a retailer can establish use of a trademark on goods when the retailer is not the “source” of the goods. Specifically, if a retailer simply affixes its own trademark to goods manufactured by a third party, does that constitute use of the retailer’s trademark in association with those goods.
Interlocutory injunctions in Canadian trademark cases are rare. The decision at first instance to grant a motion for an interlocutory injunction in a dispute related to the “Bombay Frankie” trademark therefore made headlines, at least in trademark circles, for two reasons. First, the fact that the injunction had been granted was in itself noteworthy. Second, many in the intellectual property bar were of the view that the decision misapplied certain fundamental principles of trademark law and therefore introduced uncertainty into the law.
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.