Expedited Examination in Limited Instances

In view of ongoing extensive wait times in examination, the Trademarks Office announced on May 3, 2021 it will accept requests for expedited trademark examination. These requests must be submitted in the form of a Statutory Affidavit or Declaration. No fees apply.

See the information provided in the link:

https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04946.html

There are specific circumstances and reasons applicants must provide, including:

  1. 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;
  2. 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;
  3. The applicant requires registration of its trademark in order to protect its intellectual property rights from being severely disadvantaged on online marketplaces; or
  4. 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.

Note

The Trademarks Office will review the request as soon as possible. Applicants should note that it could lose the advantage of an expedited request if extensions of time are submitted or any deadline is missed.  The Trademarks Office will also provide reasons if a request is denied.

Other Measures to improve Timelines in Examination

On the same day, the Canadian Trademarks Office also published a further notice to address delays in examination.

https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04945.html

The Examiners will spend less time providing examples of acceptable goods and services in first reports. It may be address some of these in telephone amendments. However, Examiners will await revisions prior to a more substantive review in a subsequent report(s).

It appears evident that a fulsome response to issues raised in Examiner’s reports must be considered with care. Examiners will no longer be required to consider submissions or arguments more than once. If a subsequent submission fails to raise new arguments or evidence Examiner’s may issue a final refusal. These steps could significantly increase delays and/or costs. As such, trademark owners will want to ensure they are submitting full and robust responses to Office Actions to mitigate against otherwise avoidable refusals.