Although requests for expedited examination of trademark applications have been accepted by the Office of the Registrar of Trademarks (“the Trademarks Office”) in Canada since December 2020, such requests were only granted in specific and temporary circumstances related to the COVID-19 pandemic.
On May 3, 2021, the Trademarks Office published a new practice notice entitled “Requests for Expedited Examination”, expanding the grounds on which requests for expedited examination shall be accepted and having immediate effect. The Trademarks Office indicated that these new grounds for expedited examination of trademark applications were introduced given the current wait times experienced by Applicants under conventional trademark examination.
Requests for Expedited Examination in Canada
According to the practice notice, there are now four additional grounds on which the Trademarks Office will accept requests for expedited examination of trademark applications in Canada:
- 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;
- 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;
- The Applicant requires registration of its trademark in order to protect its intellectual property rights from being severely disadvantaged on online marketplaces; or
- 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.
A request for expedited examination must be submitted in the form of an affidavit or statutory declaration, setting out the specific circumstances and reasons for the request, along with how one or more of the above criteria are met. The affidavit or statutory declaration must be made by a person having knowledge of the facts, typically the Applicant or an authorised representative of the Applicant. In the case of requesting expedited examination for the purposes of preserving priority, the request from the foreign intellectual property office must be attached to the affidavit or statutory declaration as a supporting document.
As indicated, a request for expedited examination must be submitted to the Registrar of Trademarks, in the form of an affidavit or statutory declaration clearly setting out the ground(s) on which the request is founded. If expedited examination is required for more than one trademark application, a request for expedited examination of eachtrademark application must be made.
If the request for expedited examination is accepted, the Trademarks Office will examine the application as soon as possible (i.e. out of the order received) and in accordance with conventional examination procedures and timelines. However, the Applicant may lose the advantage of the expedited examination if the Applicant requests an extension of time or misses any deadline associated with prosecution. Accordingly, timely prosecution on the part of the Applicant is expected where expedited examination is granted.
If the request for expedited examination is denied, the Trademarks Office will dispatch a written correspondence to the Applicant explaining the reasons for the denial.
Whilst there is no government fee associated with a request for expedited examination of a trademark application at current, costs are incurred for the drafting of a suitable affidavit or statutory declaration. Accordingly, the costs for requesting expedited examination of a trademark application depend on the complexity of the circumstances from which the request arises.
As Applicants can generally expect several years to pass before receiving a first Office Action on a trademark application under conventional examination, Applicants should carefully consider (1) whether circumstances exist which may form a basis for expedited examination of a trademark application in Canada; and (2) whether expedited examination will be beneficial to the Applicant. Generally, if the answer to the first question is affirmative, so too is the answer to the second question.
Based on our recent experience, an affidavit or statutory declaration which explicitly describes the circumstances meeting one or more of the prescribed grounds for requesting expedited examination is likely to be accepted. For example, the affidavit or statutory declaration may set out examples of how the one or more grounds cited applies to the circumstances. In this regard, it is worth noting that the affidavit or statutory declaration is utilised solely for the purposes of establishing grounds for expedited examination and is not made available to the public whatsoever. Therefore, Applicants seeking expedited examination of a trademark application should favour detailed reasoning over conservative disclosure of facts.
Once expedited examination is granted, Applicants should remain abreast of developments and ensure timely responsesto the Examiner. In instances where the registration of a trademark application is required for enforcement (e.g. for pending litigation or related to online marketplace enforcement), telephone interviews with the Examiner may prove valuable tools to expeditiously finalise prosecution.
The practice notice does not indicate whether or not subsequent requests may be filed if a first request for expedited examination is denied. In our opinion, it is unlikely that further requests for expedited examination will be entertained unless new circumstances arise which meet one or more of the prescribed criteria.
For further information on whether the circumstances qualify your trademark application for expedited examination in Canada, please do not hesitate to contact us.
Although the above information is believed to be accurate, it is provided without liability for general information purposes only, and should not be relied on as a substitute for proper professional advice.
By: Kimberley Conroy, Technical Advisor – Patents