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22 March 2021
In May 2020 the Canadian Intellectual Property Office (CIPO) began an initiative to accept telephone amendments for simple prosecution issues.(1) Considering the initiative's success in helping CIPO to improve efficiency and reduce its backlog, it has decided to expand the list of issues for which telephone amendments are acceptable.
As of 19 February 2021 examiners may call trademark applicants (or their Canadian trademark agent) directly to discuss the following deficiencies, instead of sending a formal examiner's report:
The applicant or their agent will have five business days to respond to the examiner's telephone call or message. While the examiner need not send a written examiner's report to raise the above deficiencies, the applicant or their agent must still provide the examiner with written confirmation to address such deficiencies.
If the examiner has received no written confirmation from the applicant or their agent within the five-day limit, a formal examiner's report will be issued.
It is hoped that expanding the list of objections that can be communicated by telephone instead of through a written examiner's report will improve trademark prosecution efficiency in Canada.
For Madrid applications designating Canada, the Canadian Trademarks Office will not communicate with a foreign representative. If no Canadian agent is appointed, the Canadian Trademarks Office will contact the applicant directly. Accordingly, applicants that wish not to be contacted directly by the Canadian Trademarks Office should appoint a Canadian agent (for further details please see "Why you should designate Canada – and a Canadian agent – in your next Madrid application").
For further information on this topic please contact Marie Christine Bernier at Smart & Biggar by telephone (+1 416 593 5514) or email (firstname.lastname@example.org). The Smart & Biggar website can be accessed at www.smartbiggar.ca.
(1) For further information please see "CIPO introduces new telephone amendments to increase efficiency of trademarks prosecution in Canada".
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