New Measures for Expedited and Timelier Trademark Examination in Canada

With the increasingly lengthy timelines for the Canadian Trademarks Office (“CIPO”) to examine new trademark applications – now approaching almost 32 months in some cases – CIPO has published two new Practice Notices to address these delays. Measures to improve timeliness in examination and Requests for expedited examination provide notable guidance and opportunities for clients and their legal representatives to consider to potentially expedite the trademark prosecution process. Many of these measures are analogous to those that have been available for quite some time before the United States Trademarks Office (“USPTO”). Drawing on our experience and insights with these measures before the USPTO, we can efficiently and effectively advise on and implement strategies regarding these measures before CIPO. We discuss these, in turn, below.

Requests for Expedited Examination

CIPO will now be considering requests for expedited examination if the applicant establishes, by way of affidavit or statutory declaration evidence, the existence of at least one of four criteria:

1. A court action is expected or underway in Canada with respect to the applicant's trademark in association with the goods or services listed in the application;
2. The applicant is in the process of combating counterfeit products at the Canadian border with respect to the applicant's trademark in association with the goods or services listed in the application;
3. The applicant requires registration of its trademark in order to protect its intellectual property rights from being severely disadvantaged on online marketplaces; or
4. The applicant requires registration of its trademark in order to preserve its claim to priority within a defined deadline and following a request by a foreign intellectual property office. Note that in such cases the request will need to be attached to the affidavit or statutory declaration.

The foregoing criteria are in addition to CIPO’s existing practice to consider requests for expedited examination for applications that cover goods or services for the prevention or treatment of COVID-19. A separate request must be submitted for each application for which expedited examination is being sought. If the request is accepted, CIPO will examine the application “as soon as possible”. We have experience successfully requesting expedited examination, including preparing the required affidavit or statutory declaration evidence, before the USPTO via the analogous procedure of a “petition to make special”. The USPTO has broader discretion regarding when to grant expedited examination. Specifically, the applicant must demonstrate that “special circumstances” exist to warrant the examination of their application out of its regular order. The “special circumstances” must not apply equally to a large number of other applicants, such as embarking on a new marketing campaign. The existence of actual or threatened infringement, pending litigation, or the need for a registration as a basis for securing a foreign registration are some of the more common grounds on which the USPTO will grant a request for expedited examination.

Prioritized Examination for Applications with “Pre-approved” Goods and Services

CIPO will “more quickly” examine, and, in some cases, prioritize, applications that take advantage of the “pre-approved” goods and services from the Goods and Services Manual. Given our experience before the USPTO that applications covering pre-approved goods and services from the U.S. Trademark ID Manual more quickly proceed to publication, we have already, where appropriate, sought to file applications in Canada using the Canadian Goods and Services Manual and will continue to do so.

Reduced Assistance for Responding to “Ordinary Commercial Terms” Objections

In most situations, CIPO will no longer provide examples of acceptable goods or services when raising an objection that the goods and services are not in “ordinary commercial terms”. CIPO may provide such examples only after the applicant files an amended application responding to the objection. This differs from the longstanding practice of the USPTO where specific examples are routinely suggested.

Fewer Office Actions/Examiner’s Reports due to Final Refusals

It is important that applicants put their best foot forward when responding to objections raised by CIPO. CIPO will only address a particular argument in response to an objection once before issuing a final refusal. If CIPO, after considering a particular argument, maintains its objection, the applicant would need to raise a new argument to avoid a final refusal. If the applicant provides further evidence in support of the same argument (or otherwise, does not raise any new arguments) and CIPO does not withdraw its objection, CIPO will issue a final refusal of the application. Once an application is refused, the applicant’s only recourse is to file an appeal with the Federal Court within two months. This change in practice by CIPO of issuing final refusals is substantially consistent with current practice by the USPTO where a “request for reconsideration after final action” and/or a notice of appeal to the Trademark Trial and Appeal Board must be filed after a final office action. Given our experience before the USPTO, we are quickly able to adapt our clients’ Canadian trademark prosecution strategy to CIPO’s new practice in this regard.

Next Steps for Applicants

The above changes in practice by CIPO, in particular, the many additional grounds for requests for expedited examination, pose new opportunities and strategies for applicants to consider in the trademark prosecution process. We have the advantage of drawing on our experience with analogous measures based on our practice before the USPTO. We invite applicants to connect with our experienced counsel at Shift Law to develop a strategy that considers these new measures by CIPO, including coordinating a cross-border strategy for trademark portfolios before the USPTO.