Options to expedite trademark examination in Canada

The Canadian Intellectual Property Office (CIPO) has continued its efforts to improve examination processing times, and has introduced options for trademark owners to expedite examination. Even so, Canadian trademark applications continue to experience significant delays in examination, with CIPO currently examining applications filed as of the following dates:

• Applications not using the Pre-approved List of Goods and Services: filed 14 December 2018
• Applications using the Pre-Approved List of Goods and Services: filed May 2019
• Madrid (based on date of WIPO notification of designation): filed 28 May 2020

The delays owe in part to higher-than-anticipated filings of trademark applications following Canada's June 2019 accession to the Madrid System for the international registration of trademarks, and to CIPO adjusting to new trademark laws becoming effective in July 2019. The delays have been compounded by resource restraints that coincided with the pandemic. CIPO has high examination standards and examines on both substantive and technical grounds, and has not compromised the approach to examination in face of the volume. For example, and to the surprise of many foreign applicants, CIPO’s approach to goods and services is very particular, and assessment can be time-consuming for CIPO’s Trademark Examination Section. In an effort to improve timeliness in examination, the Examination Section announced that it would undertake the following measures:

1. Examiners will provide fewer examples of acceptable goods or services descriptions when issuing an examiner's report.
2. Applications filed with CIPO that have statements of goods or services selected from a pre-approved list will be examined more quickly.
3. Examiners will reduce the number of reports issued and refuse trademarks in a more timely manner, with examiners being required to maintain a particular submission or argument only once before issuing a refusal.

Trademark applicants looking to expedite examination in Canada are encouraged to use only pre-approved goods and services provided by CIPO, which will result in faster examination. The pre-approved list of goods and services can be viewed here. For goods and services that have not been pre-approved, the specification must be in ordinary commercial terms, and meet the following three-part test:

1. Are the goods or services described in a manner such that it is possible to assess whether the trademark is clearly descriptive or deceptively misdescriptive of the character and quality of the associated goods and services, or the conditions of, or the persons employed in their production, or their place of origin? A trademark that clearly describes a character or quality of the goods or services is not registrable.
2. Does the statement identify a specific good or service to ensure that the applicant will not have an unreasonably wide ambit of protection? For example, goods described as “computer software”, without further specification, would give the applicant an unreasonably wide ambit of protection.
3. Are the goods or services described in a sufficiently specific manner such that it is possible to assess confusion? A trademark that is confusingly similar to a registered trademark or a pending trademark is not registrable. The nature of the goods, services or business and the nature of trade are among the surrounding circumstances considered when assessing whether trademarks or trade names are confusing.     

Further, on 3 May 2021 CIPO published a practice notice to introduce a process for requests for expedited examination. The new practice permits the submission of requests for expedited examination of trademark applications. Requests for expedited examination must be in the form of an affidavit or a statutory declaration meeting the specific requirements outlined in the practice notice and must clearly identify one or more of the following criteria to justify expedited examination:

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

Information on the number of applications for expedited examination, how they are processed, and how quickly examination will be undertaken if approved, is not yet publicly available. As the practice is evolving, there are currently a number of questions being posed by users of the Canadian system. For example, questions have arisen related to the scope of the marketplace provision for expedited examination and what this ground is intended to cover. It likely covers counterfeit goods on online marketplaces (eg, Amazon and availability of its Brand Registry); however, it is unclear what would be required to show ‘severe disadvantage’. Likewise, it is unclear whether this ground would extend to domain name and social media name squatting, for example. Users have also posed questions regarding what qualifies as an ‘expected’ court proceeding - for example, at what point does contemplation of litigation become ‘expected’ litigation? Finally, with respect to preserving a ‘priority’ claim, it is unclear, for example, whether Canadian applicants now have grounds to expedite examination in Canada to secure a US registration based on registration in Canada - for example, if the USPTO issues a suspension inquiry setting a deadline to respond with the Canadian registration, would that ‘request’ qualify even though an extension is available?

The above describes some examples of possible circumstances which may support requests for expedited examination. As these practices are still new and CIPO typically assesses matters on a case-by-case basis, there is great interest in seeing how the practice evolves. Likewise, users of the Canadian system generally are monitoring the impact of other steps and measures undertaken by CIPO to improve trademark examination timelines in Canada.

This article first appeared on WTR Daily, part of World Trademark Review, in October 2021. For further information, please visit www.worldtrademarkreview.com.