On 3 May 2021, the Canadian Intellectual Property Office (CIPO) published two new Practice Notices aiming to address its unexamined application backlog. There is currently a significant examination backlog consisting of over 161,000 applications having filing dates stretching back to April of 2018. CIPO is receiving new applications at the rate of about 6,000 applications per month, but is only issuing about 4,000 examination reports per month.[1] It is critical to address the backlog to avert a total collapse of the Canadian trademark system. CIPO’s new Practice Notices (1) Requests for expedited examination and (2) Measures to improve timeliness in examination are welcome, some might argue overdue, initiatives to promote timely grant of quality trademark rights.

Request for Expedited Examination

Effective immediately, CIPO will begin accepting requests for expedited examination of trademark application. This is in addition to the expedited examination available to trademark applications pertaining to COVID-19-related medical goods or services, which became effective on 14 December 2020.

Requests for expedited examination may be accepted if any one of the following four requirements is met:

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.

Requirements 1, 2 and 4 seem relatively straightforward, although in certain fact-specific situations, it may be difficult to assess what specific circumstances and reasons would be sufficient to show that: (i) a court action is “expected” or (ii) the applicant is “in the process” of combating counterfeit products.

As to requirement 3, the expression “severely disadvantaged on online marketplaces” is novel, so it remains to be seen what circumstances CIPO will accept as sufficient to grant such requests.  Possibly, an applicant’s inability to enroll in the Amazon Brand Registry without a Canadian trademark registration might be accepted as being “severely disadvantaged on online marketplaces”.

It might be helpful for the CIPO to provide further guidance and/or examples to illustrate how the CIPO would evaluate requests for expedited examination. The hope is that CIPO will set the bar fairly low, since expedited examination requests are made ex parte and since CIPO must significantly reduce the backlog if it is to get back to business as usual—the pandemic notwithstanding.

It should be noted that the request must be supported by evidence in the form of an affidavit or statutory declaration by a person having knowledge of the facts, setting out the specific circumstances and reasons for the request. There is no government fee associated with a request for expedited examination.

Measures to Improve Timeliness in Examination

Effective immediately, the CIPO will:

• not provide examples of acceptable goods or services in the examiner’s first report, unless the amendments to the statement of goods or services can be made by way of a telephone amendment;
• examine applications with statements of goods or services selected from the pre-approved list more quickly than those that did not use the pre-approved list option; and
• reduce the number of reports issued prior to refusal.

These measures will likely help to reduce CIPO’s unexamined application backlog. However, the measure to reduce the number of reports prior to refusal may be draconian. Refusals have been rare in Canadian trademark practice.  The examination process can involve many back-and-forth exchanges between applicants and examiners until an acceptable compromise is reached. Now, examiners will only be required to address a particular submission or argument once. The practice notice recommends that “the applicant should make every effort to ensure that it provides a complete argument so that any submissions to the Registrar following an examiner’s first report are not provided in a piecemeal manner.” That is good advice because in the event of a refusal the applicant’s only recourse will be an appeal to the Federal Court of Canada—an expensive proposition.  Applicants must therefore work with qualified trademark counsel to properly address any examiners’ objections.

The two new Practice Notices suggest that CIPO appreciates the dire state of its unexamined application backlog and aims to improve timeliness in issuing trademark rights. These Practice Notices are likely to be welcomed by brand owners and trademark counsel as the Practice Notices may make it faster for brand owners to obtain registered trademark protection, especially where such protection is needed for certain important commercial activities.

 **This article was originally published by The Lawyer’s Daily a division of LexisNexis Canada Inc.

[1] The backlog problem may have been exacerbated by the accession of Canada to the Madrid Protocol in 2019. There are now two separate ways in which a trademark can be registered in Canada: (1) via a national filing mechanism; or (2) via an international filing mechanism, i.e. the Madrid Protocol System. The Madrid Protocol System imposes certain deadlines on CIPO, including that CIPO must issue a provisional refusal (a.k.a. an examiner’s report) before the end of 18 months after CIPO is notified of the designation. To meet the new deadlines, CIPO has had to prioritize the examination of Madrid Protocol applications over non-Madrid Protocol applications. For a data-driven analysis of the backlog see Blake Wiggs’ post CIPO’s examination backlog—the Madrid effect on his Canadian Trademark Intelligence blog.