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17 May 2021
On 3 May 2021 the Trademarks Office published two new practice notices – Measures to improve timeliness in examination and Requests for expedited examination – which aim to improve delays in the processing of trademark applications. With the time between filing and examination currently surpassing 30 months, applicants will largely welcome the news of the initiatives, particularly the new ability to request expedited examination.
This article summarises the new initiatives and provides guidance on how these changes could affect applicants' filing and prosecution strategies.
The first practice notice outlines specific practices that the Trademarks Office will implement immediately to improve its timeliness in considering and issuing trademark rights.
Two of the new practices relate to the specification of goods and services. The other is more substantive.
No more help with goods and services amendments
In most cases, when issuing a first report, examiners will no longer provide examples of acceptable goods or services where amendments are required. Examiners may provide more specific examples in a subsequent report only once the applicant has filed an amended application.
Applicants encouraged to select from pre-approved list
Applications which list only pre-approved goods and services from the Canadian Goods and Services Manual will be examined "more quickly" than other applications since they will require less scrutiny from examiners.
Examiners to start issuing final refusals
The more substantive change introduced by this practice notice is that examiners will begin issuing final refusals. While examiners have always had the power to refuse applications, such power was rarely exercised. Rather, in the face of even the most hopeless substantive objections, applicants in Canada could continue filing the same arguments and examiners would keep responding with the same counterarguments. Applications could languish for years in examination this way; most applicants would eventually give up and those applications would simply lapse.
Now, examiners will have to address a particular submission or argument only once. If a subsequent response does not raise new arguments or result in the withdrawal of the objection, the application could be refused. Once an application is refused, the applicant's only recourse is to file an appeal with the Federal Court within two months.
Applicants should make a significant effort when responding to substantive objections raised by examiners in the first instance or risk receiving a final refusal. This means that there will be more trademark prosecution strategies to consider in the future.
While the initiatives announced in the first practice notice are largely positive, it will likely take several months or more to clear the backlog. For this reason, the second practice notice is particularly promising.
Expedited examination available in more situations
Until recently it had been more than 15 years since the Trademarks Office entertained requests for expedited examination of trademark applications (for further details, please see "Trademarks Office to allow expedited examination for COVID-19-related goods and services"). Despite delays continuing to increase in recent years and calls from trademark practitioners to bring back expedited examination, the office had maintained that examining an application out of sequence would create a favoured position at the expense of other applicants and could therefore not be justified.
However, at the end of 2020, the office announced that it would grant requests for expedited examination in the limited circumstance where an application lists goods or services for the prevention or treatment of COVID-19.
Now, the office has expanded the list of situations for which it will begin accepting requests for expedited examination. For a request to be accepted, the applicant must establish that one or more of the following criteria are met:
While there is no fee for expedited examination, the request must be accompanied by an affidavit or statutory declaration which sets out the specific circumstances for the request. If granted, the office will examine the application "as soon as possible". If the applicant later misses any deadlines or seeks an extension of time, it could lose the advantage of expedited examination.
While unexpected, trademark applicants and practitioners will certainly welcome this new practice. In particular, it strengthens trademark owners' ability to protect their rights in Canada by making it possible to secure a registration sooner where such registration is needed for certain enforcement activities.
To take advantage of these new initiatives and avoid possible pitfalls, applicants should consider taking various steps – including:
For further information on this topic please contact Jamie-Lynn Kraft or Ekaterina Tsimberis at Smart & Biggar by telephone (+1 613 232 2486) or email (email@example.com or firstname.lastname@example.org). The Smart & Biggar website can be accessed at www.smartbiggar.ca.
The materials contained on this website are for general information purposes only and are subject to the disclaimer.
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