Earlier in the year, the Canadian Trademarks Office announced new measures intended to improve delays in the processing of trademark applications. With the time to examination for national applications exceeding three years on average, the announcement was welcomed by trademark owners and practitioners alike.
Among the initiatives were mechanisms which enable applicants to "jump the queue" and get faster examination. Trademark owners seeking to fast-track their Canadian applications now have two options to do so.
1. Expedited examination in special cases
The first option enables trademark owners to secure a registration sooner where it is needed for certain enforcement activities or other special cases. This option requires the applicant to file an affidavit which establishes one of the following scenarios:
(a) a court action in Canada involving the mark is expected or underway;
(b) the applicant is in the process of combatting counterfeit products featuring the mark at the Canadian border;
(c) the applicant requires registration of the mark to protect its intellectual property rights on online marketplaces (for example, to enroll in the Amazon Brand Registry when the trademark is registered in Canada); or
(d) the goods or services are medical goods or services that prevent, diagnose, treat or cure COVID 19
If an affidavit is filed which establishes one (or more) of these scenarios, the trademark application is likely to be examined within a week or two from the filing of the affidavit. Recent experience has shown that the Trademarks Office is prepared to swiftly grant these requests where warranted.
2. Fast-track using pre-approved list
The second option does not require an affidavit.
Currently, examination is fast-tracked automatically (without the need for an explicit request) by about 6-10 months when all the goods and services contained in an application are listed in the Canadian Goods and Services Manual. If the goods or services in the application as originally filed do not comply with the Goods and Services Manual, but are amended to comply after filing, examination will also be fast-tracked from that point.
To encourage applicants to select from the pre-approved list as much as possible, the Trademarks Office has committed to expanding the number of entries in the Goods and Services Manual. It is expected that this option will become more attractive for applicants as the pre-approved list continues to grow.
What applicants can do
If faster examination and registration is desired, applicants should consider whether they may avail themselves of one of these new mechanisms. If a registration is required for a specific enforcement activity, then it might be appropriate to request expedited examination. If an applicant's goods or services are easily defined and fall within the Goods and Services Manual, then it is worthwhile selecting from the pre-approved list.
For further information, please contact a member of our firm's Trademarks and Brand Protection team.
The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.
