The summer of 2019 was a busy year for the Canadian Trademark system. Canada updated its trademark laws, adopted the Nice classification system, and joined the Madrid Protocol. This meant that Canada could now be designated in an International Registration. However, even before the update to its laws, the Canadian Intellectual Property Office (“CIPO”) was plagued with significant examination delays that have exasperated both attorneys and IP owners.
Citing a marked increase in Canadian trademark filings, CIPO has finally taken steps to improve the timeliness of trademark examinations. Unfortunately, the updates to its processes and changes to its technological systems have not been sufficient to allow CIPO to keep up with the huge influx of filings. It can be argued that CIPO has merely enacted policies that shift the burden to applicants. For example, the CIPO system allows for online trademark applications and instant filing receipts, but unlike the U.S. does not have a dedicated online form to accept office action responses, rather there is a means of filing an amended application with a miscellaneous form for substantive responses. Recently, CIPO enacted an online submission form for “general correspondence” that may be used for submissions that were previously submitted by a centralized fax number. Certain types of submissions to CIPO are still commonly made by fax.
One newly enacted change to expedite examinations has already been underway as of the last few months. CIPO has recently increased the types of amendments that can be resolved with the Examiner over the telephone. Telephone responses have been a longstanding policy of the U.S. Patent and Trademark Office (“USPTO”), which allows for non-substantive amendments such as disclaimers, amendments to goods and services, translation statements and other minor issues to be made either over the phone or by email. Nonetheless, in some cases, the requirement remains that the applicant must submit a revised application through the CIPO online system, rather than having the Examiner enter the amendment directly.
At the current timeline, a trademark application filed directly in Canada has an expected wait time of 24 – 30 months before the application is reviewed by a Canadian Trademark Examiner[1]. This is in stark contrast to the USPTO, which is currently experiencing delays due to a high volume of filings, but still having applications examined between 5-6 months, rather than its usual 3-4 months.
There are several consequences of these extreme delays:
- It is more difficult to enforce against infringement of an unregistered trademark in Canada, rather than a registered one.
- French language laws in Quebec require that trademarks be translated into French unless they are registered. Quebec appears to be headed away from its previous position on recognizing common law trademark rights.
- In some cases, the delays are so extreme that the applicant may lose interest in the mark before registration.
- S. applications (and other foreign applications) that rely on a Canadian trademark as an underlying foreign registration basis cannot perfect their trademark registrations[2].
- Entities without a Canadian presence would not be able to register a .CA domain name that incorporates the trademark until registration.
To address this immense backlog, CIPO has recently issued 2 separate practice notices, each with a different purpose.
PRACTICE NOTICE #1
The first Practice Notice, “Measures to Improve Timeliness in Examination” is intended to minimize delays for new filings going forward.
- Examiners will offer less guidance in identifications of goods and services
In the initial office action, except if the ID of goods and services can be resolved over the phone, Examiners will not provide examples of acceptable goods and services. Examiners will only provide guidance after the first response is filed. The intention is likely to leave the applicant to rely less on the Examiner and to come up with an acceptable identification on their own.In the U.S., Examiners routinely provide detailed and specific proposals for the identification of goods and services. To encourage the use of wording from the U.S. Manual of Goods and Services, the per class official fee is $100 less expensive per class.
Unlike the U.S., Canada has only recently adopted the Nice Classification system. This means that the Canadian Office and its Examiners are generally less experienced with Nice identifications and classifications. The Canadian Goods and Services Manual is far less detailed than its U.S. counterpart[3], and there isn’t a large cadre of registered Canadian trademarks to use as a point of reference. Further frustration emanates from applications filed in Canada that use the identical identification of goods and services from a U.S. trademark application/registration. In some cases, the U.S. Nice compliant identifications are commonly acceptable in other foreign jurisdictions (without requiring significant changes) but are rejected as misclassified or misworded in the Canadian Trademark Office. Many of CIPO’s proposed amendments are unreasonable or impossible to understand, especially when the identifications are already narrowly tailored.
It is generally well known that the USPTO is one of the strictest countries when it comes to identifications of goods and services, so rejections of acceptable identifications in the U.S. that are identically filed in Canada can leave experienced trademark practitioners flabbergasted.
- Expedited examination for applications that use the CIPO Goods and Services Manual
CIPO has expressed a commitment to move applications up in the examination queue if they rely on goods and services listed in the Canadian Goods and Services Manual. This is similar to the USPTO’s system but without the financial incentive of a reduction in official filing fees.
- Final Refusals
Currently, under Canadian Trademark law, it is possible to submit an infinite amount of responses to the same refusal, sustained repeatedly. Some office action practice may go on for years without a resolution. Under U.S. law, a refusal is made final if the basis for the refusal is not resolved through argument and no new issues are brought up during examination. Canada will now encourage its Examiners to similarly issue final actions if the refusal has not been overcome. As such, applicants are encouraged to put forth their ‘best and final’ arguments at the outset.If an application is finally refused, it must be appealed to the Canadian Federal Court. Unlike the U.S., Canada does not have an administrative body to review appeals to register trademark applications. For most applicants, such appeals will be untenable due to their significant expense.
PRACTICE NOTICE #2
The second Practice Notice, “Requests for Expedited Examination” is intended to minimize delays for currently pending applications.
To clear out the current backlog of applications, applications meeting certain criteria can now be prioritized upon request. The request must be in the form of an affidavit or statutory declaration, and must clearly set out how the criteria is met. There is currently no fee for the request. If granted, the examination of the application will be ‘expedited’ (though it is not clear how quickly).
One of the following 4 requirements must be met to be granted expedited examination:
- There is either an expected or currently pending court action in Canada, affecting the applicant’s goods or services; or
- The applicant is dealing with counterfeit goods at the Canadian border in respect to the pending application; or
- The applicant requires a registered trademark to protect its trademark rights from being severely disadvantaged in an online marketplace; or
- The priority claim with a deadline cannot be perfected absent a trademark registration in a foreign trademark office.
As a practical matter, this means that certain applications will be backlogged even further while others have a basis to jump the queue.
While well-intentioned, some of the proposed changes will simply cause further confusion and frustration. Even with these measures designed to speed up application processing, it is unlikely that these changes will improve Canada’s reputation as a “go-to” filing jurisdiction. Without fundamental changes, such as being able to access trademark documents electronically, allowing for a dedicated office action response form, and more and better-trained Examiners[4], Canada will likely not be viewed as an innovative jurisdiction for trademark filings.
[1] In the author’s own experience, trademark applications filed directly with CIPO in October of 2018 have only just received their first office actions, exceeding the 30 month period.
[2] Thankfully, the USPTO is fairly understanding in allowing suspension in these cases.
[3] On May 10, CIPO issued a new practice notice that it intends to add 100 entries each week to the Canadian Goods and Services Manual. Hopefully these updates will obviate some of the issues discussed in this article.
[4] In Canada, unlike in the U.S., Trademark Examiners are not required to be attorneys.