Latest New Policies from CIPO in Trademark Registration Process

From start to finish, the process of registering a trademark in Canada typically takes approximately 18 to 24 months. However, factors such as increased volume due in part to the legalization of recreational cannabis in Canada and changes to Canada’s Trademarks Act (the “Act”) are creating delays at the Canadian Intellectual Property Office (“CIPO” or the “Office”) and increasing the lead time for obtaining a trademark registration. On January 17, 2020, CIPO released a new practice notice on Extensions of time in Examination and to respond to a section 44.1 notice, which seeks to address some of the delays associated with trademark registration in Canada. Specifically, the Office has reversed its policy of generally granting an applicant a six-month extension of time (in addition to the ordinary six-month period) to respond to an examiner’s report. Now, extensions will only be granted if an applicant can demonstrate “exceptional circumstances” justifying why a response could not be filed within the ordinary time-frame. While this new policy may help clear some of the Office’s back-log of applications, applicants should remember that the most effective strategy to minimize the time to obtain a trademark registration is to file a carefully-drafted application with the help of experienced trademark counsel. Background After an application for the registration of a trademark is filed, the application is “examined” to ensure that, among other things, the trademark is registrable and the application conforms to the requirements of the Act. If the examiner considers the trademark to be unregistrable or the application deficient in respect of any formalities – for example, the goods or services covered by the application are not described in “ordinary commercial terms” – then an examiner’s report is issued and the applicant is given a six-month deadline to submit a response or remedy the issue. Prior to January 17, 2020, the Office’s policy was to grant an applicant one six-month extension of time to respond to an examiner’s report. No justification was required unless and until the applicant requested a second extension of time. Requests for a second extension of time were only granted if the applicant could demonstrate “exceptional circumstances” justifying why a response could not be filed in time. CIPO’s New Policy As of January 17, 2020, the Office will require an applicant to demonstrate exceptional circumstances justifying any request for an extension of time to respond to an examiner’s report. The following are some examples of exceptional circumstances that can justify a request for an extension of time to respond to an examiner’s report:

1. A recent change in the trademark agent who has been appointed to handle the application;
2. Serious or unforeseen circumstances such as illness, accident, death or bankruptcy;
3. The examiner’s report raises a likelihood of confusion objection, but the cited mark is the subject of an opposition or expungement proceeding;
4. The examiner’s report could lead to a refusal of the application on the grounds of non-registrability, lack of distinctiveness, or non-entitlement.

The above list is not exhaustive but provides guidance on the kinds of circumstances that justify an extension of time. Perhaps most-notable is the Office’s willingness to grant an extension of time to respond to an objection that could lead to refusal due to a lack of distinctiveness. Refusal of an application on the grounds that the trademark is not “inherently distinctive” is new to the Act as of June 2019, and the Office appears to recognize that applicants may require additional time to address such objections. Lastly, it should be noted that the new practice notice applies as of January 17, 2020. Therefore, an applicant need not demonstrate exceptional circumstances justifying a first extension of time to respond to an examiner’s report issued before January 17, 2020. Any request for an extension of time to respond to an examiner’s report issued after January 17, 2020 must be justified by exceptional circumstances. Take-aways The Office’s new policy concerning extensions of time should help reduce the total time it takes for an application to proceed from examination to advertisement. However, an applicant can also reduce the lead time for obtaining a registration by working with experienced trademark counsel, who can anticipate the issues a new application may face and advise on the most time and cost-effective strategy for obtaining a registration. For example, a carefully drafted trademark application can pre-empt many of the issues commonly raised in examiner’s reports, while a thorough clearance opinion can identify any pre-existing registrations or applications that could create a likelihood of confusion. If you are interested in registering a trademark, or have questions about the process, please contact a member of the Shift Law team.