In 2013, when applications were typically being examined within 6 months of filing, the mechanism to request expedited examination for trademark applications was removed by the Trademarks Office. Currently, examination of trademark applications takes about 2 years (and often longer) and the applications are examined in the order in which they are received by the Trademarks Office. On December 14, 2020, the Trademarks Office brought back expedited examination for the limited scope of trademark applications associated with medical goods or services related to COVID-19 as outlined in our previous article.
Requests for Expedited Examination
On May 3, 2021, the Trademarks Office extended the scope of trademark applications eligible for expedited examination to include applications where one or more of the following criteria are met and set out in an affidavit or statutory declaration:
- 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;
- 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;
- The applicant requires registration of its trademark in order to protect its intellectual property rights from being severely disadvantaged on online marketplaces; or
- 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.
With respect to online marketplaces, applicants may consider the impact of any current or proposed enrolment in registries such as the Amazon Brand Registry.
Although there is no fee associated with a request for expedited examination, such requests must be submitted by mail or fax to the Deputy Director of the Trademarks Office’s Examination Division, and cannot be submitted using the online trademark e-filing system.
If the request for expedited examination is accepted, the Office will examine the application as soon as possible. If the request for expedited examination is not accepted, the Office will send written correspondence to the applicant explaining why the request was denied.
Link to the official practice notice: Request for expedited examination
Measures to Improve Timeliness in Examination
On May 3, 2021, the Trademarks Office also noted that they would be adopting the following practices to try to reduce wait times in addition to hiring more staff:
- Unless the amendments to the statement of goods or services can be made by way of a telephone amendment, examiners will provide fewer examples of acceptable goods or services in the examiner’s first report.
- Applications entirely comprised of pre-approved goods or services will be examined more quickly.
- To reduce the number of examiner’s reports issued, examiners will now only be required to maintain a particular argument once as opposed to providing additional arguments in response to an applicant’s submissions.
Link to the official practice notice: Measures to improve timeliness in examination
This article is provided for informational purposes only and is not legal advice. For further information or assistance in filing a trademark application or a request for expedited examination, please contact us by phone (416) 847-0054 or by email at firstname.lastname@example.org.