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Measures to improve timeliness in examination

From: Canadian Intellectual Property Office

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The Canadian Intellectual Property Office (CIPO) is taking action to improve timeliness in issuing trademark rights. The actions being taken by CIPO are in response to higher than anticipated filings of trademark applications and our success following Canada's accession to the Madrid System for the international registration of trademarks. While CIPO has built capacity by hiring more staff, this solution alone is insufficient in the short term to avoid increased wait times. Therefore, implementing additional initiatives are necessary to ensure the issuance of timely and quality rights.

Having taken into account feedback from stakeholders, CIPO was guided by the following principles when choosing which solutions would be implemented to reduce delays in examination, namely that they should:

Consequently, and in an effort to improve timeliness while remaining focused on quality as a key priority, effective immediately the following practices will be followed during the examination of a trademark application:

Suggestions related to acceptable goods or services

Examiners will provide fewer examples of goods or services that would be considered acceptable when issuing an examiner's report.

Specifically, unless the amendments to the statement of goods or services can be made by way of a telephone amendment, examiners will no longer provide examples of acceptable goods or services in the examiner's first report.

Once the applicant has filed an amended application to re-specify any unacceptably-worded goods or services, the examiner will be able to provide more specific examples in a subsequent report.

Some applications will be examined more quickly

Approximately 15% of all applications filed with the Office of the Registrar of Trademarks have statements of goods or services selected from a pre-approved list. Since pre-approved goods or services do not require further validation by an examiner, these applications and any amended applications entirely comprised of pre-approved goods or services will be examined more quickly, in some case prior to those that did not use this option.

Fewer examination reports prior to refusal

Examiners will reduce the number of reports issued and the Office will, where reasonable, refuse trademarks in a more timely manner. To this end, examiners will only be required to maintain a particular submission or argument once.

For example, where the examiner has previously addressed state of the register evidence provided by the applicant to overcome a confusion objection, any additional evidence of this nature would not be addressed again by way of an examiner's report. The trademark could be refused if the additional state of the register evidence does not result in the withdrawal of the objection, but would be addressed in the Registrar's final decision to refuse the trademark.

Another example would be if the examiner previously maintained an objection for the reason that the trademark is considered to be primarily a name or surname under paragraph 12(1)(a) of the Trademarks Act notwithstanding the submission made by the applicant that the word has alternative meanings. The submission of more meanings of the word would also not be addressed by way of an additional examiner's report. Any additional meanings of the word would be addressed in the decision to refuse under the authority provided by section 37 of the Trademarks Act.

To this end, the applicant should make every effort to ensure that it provides a complete argument so that any submissions to the Registrar following an examiner's first report are not provided in a piecemeal manner.

Please note that all Canadian trademark applications are examined in accordance with the Trademarks Act and Regulations with guidance from the Trademarks Examination Manual.

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