Extensions of time in Examination and to respond to a section 44.1 notice

This practice notice replaces the practice notice entitled Extensions of Time in Examination, published in the Trademarks Journal on .

This practice notice comes into effect on June 17, 2019.

For information concerning extensions of time based on force majeure, please refer to our practice noticed entitled Practice Notice for Extensions of Time on Force Majeure.

Extensions of time in Examination

The Office will generally grant an applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiner's report, if the request is justified. No requests for any further extensions of time will generally be considered.

Upon the expiration of twelve months from the initial date of the examiner's report, the Office will require that the applicant demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response to an examiner's report. The Office considers that a proper response consists of a response wherein all objections or requests raised in the report have been addressed.

If at the expiry of the twelve month period mentioned above the applicant fails to file a proper response, or if the reasons provided are not considered to justify a further extension of time, the applicant will be considered in default in the prosecution of the application pursuant to provisions of section 36 of the Trademarks Act and a notice of default will be issued.

The following are examples of what could amount to an exceptional circumstance that would justify a further extension of time:

  1. Recent change in trademark agent
    There has been a very recent change in appointed trademark agent and the agent requires time to become familiar with the file.
  2. Circumstances beyond the control of the person concerned
    Examples include illness, accident, death, bankruptcy or other serious and unforeseen circumstances.
  3. Transfer
    There is a request pending at the Office to record or register the transfer of an application or registered trademark, and said transfer would overcome a confusion objection.
  4. Opposition
    The cited co-pending and confusing trademark is the subject of opposition proceedings initiated by the applicant.
  5. Section 45
    The cited registered trademark is subject to a section 45 proceeding initiated by the applicant.
  6. Official mark
    The applicant is currently negotiating a consent from the holder of an official mark.
  7. Division of a Protocol application
    The applicant has filed a request for the division, in respect of Canada, of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created.

Extensions of time to respond to a notice issued under section 44.1 of the Trademarks Act

Under subsection 44.1(1) of the Trademarks Act, the Registrar may give notice requiring the owner of a registered trademark to furnish, within six months of the date of the notice, a statement of the goods or services in respect of which the trademark is registered grouped in the manner described in subsection 30(3).

If at the expiry of the six month period mentioned above the applicant fails to file a statement, the Registrar will send a further notice that the registration may be expunged if the statement is not furnished within two months of this second notice.

The Office will generally only grant an extension of time if the registered owner can demonstrate exceptional circumstances justifying why it is not yet possible to furnish the statement.

The following are examples of what could amount to an exceptional circumstance that would justify one six-month extension of time to furnish the statement:

  1. Recent change in trademark agent
    There has been a very recent change in appointed trademark agent and the agent requires time to become familiar with the file.
  2. Circumstances beyond the control of the person concerned
    Examples include illness, accident, death, bankruptcy or other serious and unforeseen circumstances.
  3. Transfer
    There is a pending request at the Office to register the transfer of the registered trademark.

Fee

In view of section 14 of the Trademarks Regulations, a person that applies for an extension of time under section 47 of the Trademarks Act must pay the prescribed fee of $125. This fee is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations. Therefore, a fee would be required where the registered owner must furnish the Registrar with a statement required under subsection 44.1(1) of the Act but would not be required to request an extension of time to respond to an examiner's report since the period of time to respond is not fixed in either the Act or its Regulations.

The prescribed fee is required to apply for the extension of time and is not dependent on whether the extension is granted or refused.

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