Trademarks and the Need for Speed

When it comes to IP, the old adage “time is money” is particularly true. The quicker you can secure IP rights to things like patents and trademarks, the more quickly you can enforce those rights and potentially secure damages for infringement. But one of the biggest barriers when it comes to enforceability, is the time it takes for applications to be approved. Thankfully, if you need to increase the speed through which your trademark application moves through the prosecution phase, the Canadian Intellectual Property Office is taking measures to reduce the trademark related backlog and expedite examination. Find out if you are eligible to take advantage by filing a request for expedited examination.


What’s taking so long?

You are not imagining it. It’s taking longer to get a Canadian trademark.

In fact, in the 2020 IP Canada Report, trademarks were identified as the fastest growing segment of Canadian IP filings. That, along with the 2019 implementation of the Madrid protocol (that lets applicants file for multiple international trademarks through one centralized process), which saw almost 10,000 trademark applications in the first 6 months of Canada’s membership, means that it currently takes an average of 30 months to examine a trademark application.

On May 3, 2021, the Canadian Intellectual Property Office, who oversees trademark prosecution in Canada, announced some steps it was taking to help combat the trademark-related backlog as well as reduce the amount of time applicants are waiting for trademark approvals.

We welcome this initiative from CIPO as obtaining trademark registration in a reasonable time frame is important for being able to effectively enforce your trademark rights!

Ch-Ch-Ch-Changes

Here are some of the measures that CIPO is introducing:

Changes to how Examiners Respond

Paragraph 30(2)(a) of the Trademarks Act states that an application for a trademark shall contain, “a statement in ordinary commercial terms of the specific goods or services in association with which the trademark has been used or is proposed to be used.”

How do you know if your statement will meet that criteria? CIPO further clarifies, “A statement of goods or services is considered to be in ordinary commercial terms where research discloses that similar language and scope has been used by others in the same industry to describe the applicant’s goods or services.”

So, a trademark application must be ordinary but specific…what does that mean? “Software,” for example, while an ordinary term, is not allowed as a description because it lacks specificity; but “accounting software” may be allowed.

In order to reduce the amount of time Examiners spend on individual applications, when the examiners requests a revision to the description, they will now provide fewer examples of acceptable descriptions of goods or services.

Previously, if an Examiner felt that the application did not use ordinary commercial terms they would provide examples of what would be considered acceptable. Now, there will be no examples included in the first report and only minor amendments that can be proposed via telephone amendment will be provided.

Goods and Services Manual 

CIPO does make available a goods and services manual that lists pre-approved descriptions of goods and services. Any applicant and/or agent is welcomed and encouraged to make use of this manual when preparing their trademark applications.

CIPO has indicated that if the descriptions of goods and services associated with the trademark come out of this manual, the trademark application can be examined faster (and in some cases prior to applications that did not use this option) since these descriptions do not need to be validated by an Examiner.

Making use of this provision would be advantageous as CIPO estimates that only 15% of all applications filed make use of the pre-approved terms.

Fewer Examiner Reports

Examiners will reduce the number of examiner reports (stating their objections to registration) issued and CIPO will, where reasonable, refuse trademarks in a timelier manner.

If your response to an Examiner’s report does not raise any new arguments, the Examiner can issue a refusal. The applicant should therefore ensure that the arguments to overcome the objections are as complete as possible.

Expedited Examination

Previously, CIPO was only examining trademarks in the order that they were received but, as of May 3, will now be accepting requests for expedited examination. In order to be considered you must meet specific criteria and file an affidavit or declaration attesting to that.

You can file a request to expedite examinations of trademark applications in one of the following situations:

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 to protect its intellectual property rights from being severely disadvantaged on online marketplaces (these may include e.g., goods sold on amazon)

4 | The applicant requires registration of its trademark to preserve its claim to priority within a defined deadline and following a request by a foreign intellectual property office.

5 | An approval for use of the goods or services listed in the application has been submitted to, or has been obtained from, Health Canada under the same name as the trademark. In this case the applications need to include at least the some goods and services for medical equipment and medical services related to COVID-19.

Feeling the need for speed? 

It may take a while for the effects of these changes to be felt by applicants waiting for their trademarks to be examined, so knowing how best to approach these updated requirements is key. If you want your Canadian trademark registration to proceed faster so that you can enforce your rights effectively against potential infringers,  Stratford Intellectual Property can develop a trademark strategy, file, and manage your trademark application in a way that it can pass through examination faster and file a request for expedited examination on your behalf if the conditions apply.


About Kim: A registered trademark agent in Canada, Kim is an IP Specialist with a unique combination of skills, education, and assets with a drive for success and a passion for Intellectual Property. Working with growing organizations for many years she’s honed her ability to be both creative and strategic with IP solutions and strategy implementation plans.

She specializes in IP analytics and Trademark Strategy and Prosecution. Before becoming an IP specialist at Stratford, she practiced law in Belgium for 5 years. Kim holds an LLB and LLM in law from Belgium and followed trademark studies at McGill University.

To connect with Kim, send her an email or follow her on LinkedIn.

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