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21 December 2020
On 14 December 2020, for the first time in more than a decade, the Trademarks Office announced that it will grant requests for the expedited examination of trademark applications. However, expedited examination will be limited to applications where the goods or services are for the prevention or treatment of COVID-19.
This is a notable change in practice, since there is currently a significant backlog facing trademark applications in Canada, with delays in examination of approximately two years from filing.
Approximately 15 years ago, the Trademarks Office was very backlogged, with long delays between the filing of trademark applications and the examination of the applications. At that time, requests for expedited examination were granted in certain cases.
However, because the criteria for granting expedited prosecution were somewhat vague, the expedited examination process was abused by some applicants. Further, examination times subsequently improved considerably. Accordingly, the Trademarks Office stopped granting expedited prosecution requests.
Unfortunately, for several reasons, including changes to Canadian trademark law in 2019 exacerbated by COVID-19-related challenges, delays at the Trademarks Office have again increased significantly. At present, the delay from filing to examination is approximately two years.
As of 14 December 2020, for the first time in more than a decade, the Trademarks Office will grant requests for expedited examination. However, expedited examination will be permitted only for a limited range of situations, all of which must have a connection to COVID-19.
In particular, to qualify for expedited examination, the following requirements must be met:
For the moment at least, requests for expedited examination for any other reason will be rejected.
If a request for expedited examination is granted and the applicant later misses a deadline or seeks an extension of time, the Trademarks Office may cease further expedited examination from that point.
The Trademarks Office has issued a practice notice which sets out the requirements in greater detail.
For further information on this topic please contact Philip Lapin at Smart & Biggar by telephone (+1 613 232 2486) or email (firstname.lastname@example.org). The Smart & Biggar website can be accessed at www.smartbiggar.ca.
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