The Canadian Trademarks Office introduced new procedures earlier this year aimed at reducing trademark application processing delays. The news was welcomed by trademark owners and practitioners alike, as the average time to examination for national applications is more than three years.
New procedures to speed up the processing of your Canadian trademark application
Mechanisms that allow applicants to “skip the queue” and acquire a faster examination were among the proposals. Trademark owners with Canadian applications that need to be expedited now have two options.
The first option allows trademark owners to get a registration more rapidly in instances where it is required for specific enforcement actions or other exceptional circumstances. This option necessitates the filing of an affidavit indicating one of the following scenarios:
- a court action in Canada involving the mark is expected or underway;
- the applicant is in the process of combatting counterfeit products featuring the mark at the Canadian border;
- 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
- the goods or services are medical goods or services that prevent, diagnose, treat or cure COVID 19
If an affidavit establishing one (or more) of these instances is produced, the trademark application will most likely be examined within a week or two after the affidavit’s filing. Recent experience has demonstrated that the Trademarks Office is willing to accept these requests quickly where they are warranted.
The second option does not necessitate the use of an affidavit.
When all of the products and services included in an application are listed in the Canadian Goods and Services Manual, the examination is now expedited by about 6-10 months (without the need for an explicit request). If the items or services in the application do not correspond with the Goods and Services Manual as initially submitted, but are modified to comply after filing, the examination will be expedited from that point forward.
The Trademarks Office has dedicated itself to increasing the number of entries in the Goods and Services Manual to encourage applicants to choose from the pre-approved list as much as possible. As the number of applicants on the pre-approved list increases, this option is projected to become increasingly appealing to them.
If applicants need a quicker examination and registration, they should see if one of these new mechanisms is available to them. It may be acceptable to request expedited examination if a registration is necessary for a specific enforcement operation. It is useful to choose from the pre-approved list if an applicant’s products or services are simply specified and are within the scope of the Goods and Services Manual.
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