If you have ever applied for a trademark in Canada, you are probably well aware that it can take from 18 to 24 months for the registration to be examined for a variety of compliance issues, then completed. And if that’s not enough, changes in Canada’s Trademarks Act have created a backlog at the Canadian Intellectual Property Office (CIPO), increasing in the lead time required for obtaining a trademark registration.
In January, CIPO released a notice regarding Extensions of time in Examination and to respond to a section 44.1 notice, which addresses the delays in Canada’s trademark registration process. This includes, most notably, the policy of granting a six-month extension in time to respond to the examiner’s report.
It is expected that this change of policy will relieve some application backlog. Still, it should be remembered that it is most effective for trademark applications to be filed with the assistance of qualified trademark counsel.
CIPO’s New Policy
After January 17, 2020, the CIPO will require that an applicant demonstrate exceptional circumstances in requesting an extension of filing time to an examiner’s report. What follows are examples of extraordinary circumstances that could justify a request for an extension to respond to an examiner’s report:
- A recent change in the trademark agent appointed to handle the application; unforeseen circumstances such as illness, accident, death or bankruptcy;
- The examiner’s report raises a likelihood of confusion objection;
- The examiner’s report could lead to a refusal of the application on the grounds of non-registrability.
It should also be noted that the new rule is effective as of January 17, 2020. As a result, an applicant does not need to demonstrate exceptional circumstances justifying a first extension of time to respond to an examiner’s report issued before that date.
The CIPO’s new policy concerning time extensions should help reduce the time it takes for applications to proceed from examination to use.
However, an applicant can also reduce the lead time for obtaining registration by working with an experienced trademark lawyer or agent. An agent or lawyer can help to anticipate issues and better streamline the process to help save time while trying to obtain a trademark in Canada.