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10 February 2020
Prior to 17 January 2020, time extensions were readily available during Canadian trademark prosecution. A single six-month extension could be secured without providing any substantive reasons. Further six-month extensions could be secured by demonstrating exceptional circumstances. That has now changed as a result of a practice notice issued on 17 January 2020.
Effective immediately, the Trademarks Office will not grant time extensions for office actions issued on or after 17 January 2020 unless exceptional circumstances are demonstrated.
The Trademarks Office has expanded the list of potential exceptional circumstances to include:
Notably, when responding to substantive objections, a single six-month time extension is available only once during the life of the application. For example, if an applicant obtains a six-month time extension to respond to a confusion objection in response to an earlier examiner's report, it will not be possible to obtain a six-month time extension to respond to a subsequent examiner's report – unless there is a different exceptional circumstance.
For any outstanding examiner's reports issued prior to 17 January 2020, a single six-month extension can still be secured without providing any substantive reasons.
For further information on this topic please contact Philip Lapin or Mark Evans at Smart & Biggar by telephone (+1 416 593 5514) or email (firstname.lastname@example.org or email@example.com). The Smart & Biggar website can be accessed at www.smart-biggar.ca.
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