CIPO targets Canadian trademark prosecution backlog

The Canadian Intellectual Property Office (CIPO) published two new Practice Notices on May 3, 2021, aimed at tackling the impact of its significant and growing backlog of Canadian trademark applications filed under the national, as opposed to the Madrid, system.  Following Canada’s June 2019 accession to the Madrid Protocol system for filing trademark applications in multiple jurisdictions at the same time, applicants who file applications in Canada using the national, non-Madrid system have experienced increasingly lengthy delays in the initial and subsequent prosecution of their applications.

The average time, from the date of filing an application under the non-Madrid system to first examination, is currently in the 28 – 30 month range – and there are fears that delay may increase over the next few years.  This stands in stark contrast to applications designating Canada pursuant to the Madrid system, which under the terms of Canada’s accession to Madrid, must be examined within 18 months of filing.  The reasons behind this significant difference are varied and complex.  While it certainly wasn’t CIPO’s intention or desire, a two tiered system has arisen, with applicants who make direct national filings in Canada being significantly disadvantaged in contrast to those applicants who are able to utilize the Madrid system.

To its credit, CIPO has recognized the untenable situation that has arisen.  The publication of these two Practice Notices is an attempt by CIPO to correct course.

Expedited Examination Requests – The first Practice Notice provides that CIPO will begin accepting requests for expedited examination of trademark applications.  The reasons justifying the grant of such a request include:

  • the applicant requiring registration of its trademark in order to protect its intellectual property rights from being severely disadvantaged on online marketplaces;
  • a pending or anticipated court action in Canada with respect to the trademark; and
  • the applicant being in the midst of combatting counterfeit products bearing the trademark at the Canadian border.

It remains to be seen how much of CIPO’s already limited examination resources will be diverted away from prosecution of applications to responding to requests for expedited examination.  It should be noted that this new provision for expedited examination requests is in addition to the ability to request expedited examination of applications for marks that include goods or services related to COVID-19.

Measures To Speed Up Examination – The second Practice Notice sets out three specific measures that CIPO has adopted to speed up processing of applications.  First, Examiners will now provide fewer examples of goods and services descriptions that would be considered acceptable when issuing an objection to such descriptions.  The second is that priority will be given to applications that include statements of goods/services that are selected from a pre-approved list.  The third measure will see Examiners being required to maintain a particular submission or argument only once.  If an applicant’s response to an initial Examiner’s Report doesn’t adequately address all of the Examiner’s objections, a final refusal will be issued rather than another Examiner’s Report maintaining the initial objection.  The impetus is now on applicants and their counsel to advance all arguments in response to an Examiner’s Report, rather than piecemeal.

The efficacy of the above measures will take time to play out and the proof will be in the proverbial pudding.  Watch this space for updates on CIPO’s progress in reducing its trademark prosecution backlogs.

CIPO Issues Blanket Extension to Trademark Deadlines (Again): Until August 31, 2020

After previously announcing what was supposed to have been the final (for now) blanket extension of time, the Canadian Intellectual Property Office has made yet one further automatic extension, effectively until August 31, 2020. This is to account both for continuing COVID-19 disruptions and certain critical maintenance to CIPO’s systems, which was to occur at the end of the previous (final) automatic extension and would have meant CIPO’s online and fax services would have been unavailable for a period.

These extensions now effectively cover deadlines falling between March 16, 2020 and August 30, 2020. No further automatic extensions are anticipated in the short term, though should the evolving situation with the pandemic warrant, we may see these again. As we noted when CIPO made its last announcement, further extensions of time may still be available on a case-by-case basis, due to ‘exceptional’ circumstances that are ‘beyond the control of the person concerned’ (in addition to any standard extensions of time that may be available).

As a best practice, we recommend still meeting the original deadlines for all Canadian trademark matters, where possible. Clark Wilson LLP’s trademark group remains accessible and available to assist, and is working to meet such deadlines where we have timely instructions.

CIPO’s latest announcement on these automatic extensions, first made March 17, 2020 (and last updated August 19, 2020), can be found here.

CIPO Issues Notice of Final Blanket Extension (for now)

The Canadian Intellectual Property Office has just published notice of its decision to further extend the “designated days” period on account of continuing COVID-19 disruptions. Since the onset of the pandemic in Canada in early March, CIPO has issued nine such notices, effectively creating a “blanket extension” of all CIPO deadlines arising since then.  This latest extension will expire on August 21, 2020, which means all deadlines falling between March 16 and August 23 will now come due on August 24—assuming, of course, they haven’t already been addressed.

In a departure from its prior notices, CIPO has indicated that this is the last blanket extension it intends to grant for the time being. However, CIPO’s standard extension practice notice does provide for extensions of time in ‘exceptional’ circumstances that are ‘beyond the control of the person concerned’, so it may be possible for applicants to obtain further extensions on individual matters. Some explanation of unique hardship, however, will likely be necessary to justify the extension request; pointing merely to the existence of the pandemic will likely not suffice. Careful, case-by-case consideration should be given to the deadline faced to ensure the appropriate response.

CIPO Again Extends Trademark Deadlines Due to COVID-19: Until August 10, 2020

Now for the eight time, the Canadian Intellectual Property Office has again extended its earlier automatic extensions on account of continuing COVID-19 disruptions, until at least August 10, 2020 (the previous and seventh extension discussed here). These extensions now effectively cover deadlines falling between March 16, 2020 and August 9, 2020. Yet again, CIPO has not indicated this is the last automatic extension, and therefore further extensions are likely though not certain.

As a best practice, we recommend still meeting the original deadlines for all Canadian trademark matters, where possible. Clark Wilson LLP’s trademark group remains accessible and available to assist, and is working to meet such deadlines where we have timely instructions.

CIPO’s latest announcement on these automatic extensions, first made March 17, 2020 (and last updated July 15, 2020), can be found here.

Yet Another CIPO Extension to Trademark Deadlines Due to COVID-19: Until July 20, 2020

In light of the continuing COVID-19 disruptions, the Canadian Intellectual Property Office has again extended its earlier automatic extensions, now until at least July 20, 2020 (the previous and sixth extension discussed here). These extensions now effectively cover deadlines falling between March 16, 2020 and July 19, 2020. Again, CIPO has not indicated this is the last automatic extension, and therefore further extensions are likely though not certain.

As a best practice, we recommend still meeting the original deadlines for all Canadian trademark matters, where possible. Clark Wilson LLP’s trademark group remains accessible and available to assist, and is working to meet such deadlines where we have timely instructions.

CIPO’s latest announcement on these automatic extensions, first made March 17, 2020 (and last updated June 30, 2020), can be found here.

Sixth CIPO Extension to Trademark Deadlines Due to COVID-19: Until July 6, 2020

Once again, in light of COVID-19 disruptions, the Canadian Intellectual Property Office has extended its earlier automatic extensions until at least July 6, 2020 (the previous extension discussed here). These extensions now effectively cover deadlines falling between March 16, 2020 and July 5, 2020. CIPO has not indicated this is the last automatic extension, and therefore further extensions are likely though not certain.

As a best practice, we recommend still meeting the original deadlines for all Canadian trademark matters, where possible. Clark Wilson LLP’s trademark group remains accessible and available to assist, and is working to meet such deadlines where we have timely instructions.

CIPO’s latest announcement on these automatic extensions, first made March 17, 2020 (and last updated June 9, 2020), can be found here.

Further CIPO Extension to Trademark Deadlines Due to COVID-19: Until June 15, 2020

The Canadian Intellectual Property Office has yet again (the previous and fourth extension discussed here) extended its earlier automatic extensions until at least June 15, 2020. These extensions, to deal with COVID-19 disruptions, now effectively cover deadlines falling between March 16, 2020 and June 14, 2020. As CIPO has not indicated this is the last extension, further extensions are still anticipated. CIPO also indicates that it is “working to eliminate any residual delays in services that have occurred as a result of the ongoing COVID-19 outbreak”, though delays are still occurring.

As a best practice, we recommend still meeting the original deadlines for all Canadian trademark matters, where possible. Clark Wilson LLP’s trademark group remains accessible and available to assist, and is working to meet such deadlines where we have timely instructions.

CIPO’s latest announcement on these automatic extensions, first made March 17, 2020 (and last updated May 26, 2020), can be found here.