If you are considering filing a trademark application in Canada, recent improvements in examination timelines at the Canadian Intellectual Property Office (CIPO) are worth noting. CIPO currently forecasts that new trademark applications filed in April 2026 will wait approximately 7.2 months before being examined.

This marks a significant improvement. As reported in our previous IP news posts, examination delays at CIPO were, until recently, a significant concern, with delays stretching multiple years.

For trademark applicants, shorter examination timelines have practical implications. Businesses can now receive feedback on registrability issues and identify potential conflicts with third-party marks sooner.

If you have questions about trademark filing strategy or timing, feel free to reach out to a member of our team.

Further to our post last week, the recent practice notice released by the Canadian Intellectual Property Office (“CIPO”) amends CIPO’s approach to patentable subject matter.

The practice notice states that the references in the Manual of Patent Office Practice (“MOPOP”) to the “contribution” of a claim, to a “technological solution to a technological problem”, and to evaluating essentiality of elements based on a “problem and solution” during purposive construction in Chapters 12, 17, 18, 22 and 23 no longer apply.

The removal of the “problem and solution” language from the MOPOP is a welcome step in the right direction as courts have repeatedly found that CIPO mischaracterizes claim construction when following their “problem-solution” approach.

CIPO has also updated their guidance with respect to computer-implemented inventions, medical diagnostic methods and medical uses and games.

With respect to games, CIPO’s prohibition against methods of playing games as being unpatentable subject matter has been lifted.

With respect to medical diagnostic methods, CIPO has set out guidelines with respect to what sort of diagnostic methods CIPO will consider patentable:

“[I]f the subject-matter of a diagnostic method claim as construed defines elements that include physical steps, e.g., for measuring, identifying, detecting, assaying, etc. the presence or quantity of an analyte(s) in a sample, then the claim would be considered patentable subject-matter.”

With respect to “medical uses”, CIPO states that the key consideration is “whether professional skill and judgment would be required in using the invention”. Where no skill and judgment is required, the medical use may be patentable. CIPO notes that fixed dose regimens are an indication that no skill or judgment is required and therefore such claims may be patentable.

We note that the Supreme Court of Canada is currently considering the issue of the patentability of methods of medical treatment, and changes to this area of law may occur as a result of the Supreme Court’s decision.

The Canadian Intellectual Property Office (CIPO) has released a new practice notice providing guidance on CIPO’s approach to determining whether patent claims are directed to patentable subject matter. The practice notice is purported to take into account recent Federal Court decisions where the Court has overturned decisions of the Commissioner of Patents that rejected patent applications for being directed to non-patentable subject matter.

The practice notice has particular application to computer-implemented inventions, methods of medical diagnostics, and medical uses (e.g. dosing regimens).

It remains to be seen whether the approach CIPO will now apply according to this practice notice will affect the prospects of patent grant for these type of inventions.

The practice notice is available here. CIPO has also provided examples applying the analysis under the practice notice here.

Canadian intellectual property stakeholders can now learn how to spot scams, see real examples of scams, and report suspicious activity through the Canadian Intellectual Property Office’s new IP Scam Awareness Zone website.

The website comes on the heels of Canadian businesses and intellectual property owners increasingly being the target of scams, such as those that misuse publicly available intellectual property information and/or impersonate legitimate patent and trademark agents, intellectual property firms, and government agencies.

Access the IP Scam Awareness Zone here.

In Pollock-Cameron Investments Corporation v. Canada Gold and Silver Exchange Ltd., the Registrar of Trademarks had to determine whether the trademark GOLD VANCOUVER remained in use in Canada in relation to printed and electronic publications and promotional items.

Canada Gold and Silver Exchange Ltd. (the “Owner”) owns a registration for the trademark GOLD VANCOUVER in association with two broad categories of goods:

1. Printed and electronic publications, namely newsletters, brochures, pamphlets, flyers, posters, signs, calendars, postcards, and directories, and
2. Promotional items, namely t-shirts, stickers, bumper stickers, keychains, mouse pens, coffee mugs and fridge magnets.

Pollock-Cameron Investments Corporation (the “Requesting Party”) initiated Section 45 summary expungement proceedings against the registration, and the Owner was required to show use of the trademark in Canada between March 20, 2022 and March 20, 2025.

The evidence filed by the Owner focused on explaining the nature of the Owner’s business as providing appraisal services using written appraisal documents for valuable items like gold, jewelry, and coins. The appraisal documents were printed and sold to customers and bore the trademark GOLD VANCOUVER.

As the evidence was silent with respect to the use of the trademark for promotional items, the key question during the proceedings was whether the appraisal documents qualified as printed and electronic publications and in particular, as “pamphlets” or “flyers”.

The Requesting Party argued that the Owner was trying to mischaracterize the written appraisals as being pamphlets or flyers. The Owner countered that the goods should be interpreted broadly, further noting that the purpose of Section 45 proceedings was to remove trademarks that have fallen into disuse and not to penalize registrants for variations in terminology.

The Registrar ultimately accepted a broad interpretation of the goods and conceded that the written appraisals qualified as pamphlets or flyers. However, it was noted that there was no evidence that such pamphlets or flyers were distributed in electronic form, concluding that the Owner’s evidence did not show use of the registered trademark for electronic publications.

The registration was amended to retain only printed publications, namely pamphlets and flyers.

This decision serves as a reminder that trademark registrations covering a broad list of goods or services are vulnerable if not actively used across all categories. While the Registrar appears to be open to a flexible approach in interpreting the nature of goods, such interpretation is not without limits, such as when it comes to differences between printed and electronic publications.

In AP&C Advanced Powders & Coatings Inc. v. Tekna Plasma Systems Inc., the Federal Court of Appeal dismissed AP&C Advanced Powders & Coatings Inc. (“AP&C”)’s appeal of the Federal Court’s decision that certain claims in two related patents were invalid for ambiguity. The patents at issue, Canadian Patent Nos. 3,003,502 and 3,051,236, describe metal-powder atomization processes for use in applications such as 3D printing and powder injection molding.

The Federal Court had found that the term “depletion layer” in the claims was not a term of art and could not be given a reliable meaning by a person skilled in the art. As a result, the claims at issue failed to distinctly define the subject matter of the invention in explicit terms, as required by the Patent Act. Since a person skilled in the art could not determine what fell inside the claim and what did not, the claims were invalid for ambiguity.

AP&C argued that the Federal Court erred by effectively requiring a valid patent claim to include a means of proving infringement, but the Court of Appeal rejected that argument. The Court of Appeal referred to the Supreme Court of Canada’s reasoning in Free World Trust v. Électro Santé Inc. that unless the claims of a patent distinctly and explicitly define the invention so that the public knows where it may act with impunity, it will become a “patent of uncertain scope” that is a “public nuisance”. Given its disposition on ambiguity, the Court of Appeal did not address AP&C’s other arguments regarding the Federal Court’s findings on insufficiency or infringement.

The full decision can be found here.

In trademark cases, online surveys may be admissible as evidence; however, they must be properly designed and free from methodological flaws that may otherwise undermine their validity and reliability. In PIM Brands, Inc. v. Hershey Chocolate & Confectionery LLC, the Federal Court of Appeal (FCA) confirmed that the absence of an in-person observer inherent to any online survey is not a basis for excluding an online survey.

PIM had sought to register the marks SWISSKISS and SWISSKISS & Design for Swiss-originated chocolate. Hershey opposed the applications based on its registered KISS and KISSES marks. Both sides filed competing online survey evidence before the Federal Court. The Federal Court declined to admit the survey evidence on validity and reliability grounds.

The Federal Court had rejected PIM’s surveys on three grounds: (i) a priming bias from repeatedly referencing “Swiss chocolate” in the survey questions; (ii) a possibility that participants could use their browser’s “back” button to re-view the mark after its timed removal; and (iii) a broader concern that online surveys lacked a “person in the loop” to verify respondent identity and independence.

The FCA upheld the Federal Court on the first two grounds. On priming bias, it agreed that systematically framing questions around “Swiss chocolate” would predictably steer respondents away from non-Swiss manufacturers like Hershey, particularly given that there was no evidence that Swiss chocolate occupied a distinct product category. On the “back” button issue, the FCA noted that the affiant could not confirm whether the survey respondents would be able to undo the mark removal by utilizing the browser’s “back” button and view the mark again because the affiant had only tested the beta version of the survey, and not the live online version.

On the broader “person in the loop” concern, however, the FCA departed from the Federal Court’s reasoning. The FCA held that the Federal Court went too far in treating the inherent features of any online survey as a basis for exclusion. It noted that telephone surveys are vulnerable to the same criticisms but are routinely admitted by the courts. The FCA held that online surveys, like any other type of evidence, should be assessed on a case-by-case basis and should not be categorically excluded.

Ultimately, the FCA characterized this error as non-determinative. The other grounds, namely, priming bias in question design and untested controls over mark exposure, supported the Federal Court’s decision to reject the surveys.

A copy of the decision is available here.

Trademark registrants take note – a recent decision from the Trademarks Opposition Board (TMOB) highlights the relatively low evidentiary threshold required to maintain a trademark registration in the context of a Section 45 summary expungement proceeding.

At the request of Deeth Williams Wall LLP (the Requesting Party), a Section 45 notice was issued requiring Rachel Ettinger (the Registered Owner) to show that the mark “HERE FOR HER” (the Mark) had been used in Canada within the previous three years. The three-year period (the Relevant Period) was 23 January 2022 to 23 January 2025.

The Mark was registered in association with “providing information in the field of women’s health issues via an online blog”.

In response to the notice, the Registered Owner filed evidence comprising archived screen captures from November 2022 and March 2023 of her blog displaying the Mark. The blog had not been updated since December 2020. The Registered Owner also filed analytical reports from her website hosting provider showing that the blog was accessed by Canadians during the Relevant Period.

The Requesting Party alleged, inter alia, that the analytical reports from the website hosting provider were inadmissible hearsay, and that because the website had not been updated since December 2020, it could not be considered a “blog”.

The TMOB rejected both of these arguments.

Regarding the hearsay allegation, while acknowledging that the analytical report from the website hosting provider was hearsay, the TMOB concluded it was both necessary and reliable (and therefore admissible). The TMOB noted that it would be difficult for a website owner to prove Canadian access to an online blog in any other way.

Regarding the allegation that the website had not been updated since December 2020 and was therefore not a “blog”, the TMOB noted that the evidence showed that the blog site was accessed during the Relevant Period and that it was immaterial that the blog posts occurred before the Relevant Period.

This decision from the TMOB confirms that a relatively low evidentiary threshold is required to maintain a trademark registration in the context of a s. 45 proceeding, and that the TMOB tends to avoid taking an overly technical approach when assessing evidence.

A full copy of the decision is available here: https://canlii.ca/t/khzsr