The Canadian Intellectual Property Office (CIPO) recently modified its Trademark Service Standards to update various service standards as of January 1, 2024.
Notably, CIPO has made an effort to improve its service standards by clarifying and reducing the amount of time from filing a trademark application to the issuance of a first action (approval or first report), as reproduced in the table below. In this regard, CIPO’s previous trademark service standards only set a service standard for the amount of time between filing a trademark application and receiving a filing notice. Applicants were left with uncertainty and with some waiting up to 5 years to receive a first action for applications filed without using CIPO’s pre-approved list of goods and services. The revised service standards only apply to applications filed on or after January 1, 2024.
The most notable updates to trademark service standards are set out in the table below:
|
Service |
New Standard as of Jan 1, 2024 |
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Request for giving public notice for a badge, crest, emblem, mark or armorial bearing |
CIPO will complete a first action (public notice of the prohibited mark in the Trademarks Journal or first report) within 12 months upon receipt of a compliant request and payment of the prescribed fee. |
|
Application for the registration of a trademark - Online |
CIPO will send a first action (approval or first report) within 18 months from the filing date of a domestic electronic application that is filed using the pre-approved list of goods and services and payment of the prescribed fee. CIPO will send a first action (approval or first report) within 28 months from the filing date of a domestic electronic application that is filed without using the pre-approved list of goods and services and payment of the prescribed fee. |
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Application to extend the statement of goods or services of a trademark registration |
CIPO will send a first action (approval or first report) within 28 months from the filing date of a paper application and payment of the prescribed fee. |
Fee Remissions at CIPO
The revised service standards are important as CIPO is required to remit a portion of a fee (pursuant to the Fee Services Act), also known as a remission when a service standard is determined not to have been met and a remission is deemed warranted. However, remissions due under the Fee Services Act are only applicable to services requested on or after April 1, 2021. As noted above, any applications filed before January 1, 2024, will not benefit from the revised service standards and corresponding fee remissions in the event CIPO fails to meet those standards.
The amount to be remitted will depend on the degree to which the service standard was not met. CIPO will remit 25% of the fee paid if an eligible service standard is missed by 50% or less. Otherwise, if the service standard is missed by more than 50% of the standard, CIPO will remit 50% of the fee paid. Further, CIPO is required to remit such portion of the fee paid before July 1 of the following fiscal year.
