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.
Background to delays at Trademarks Office
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.
Expedited examination of trademark applications relating to COVID-19
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:
- The request must be filed in the form of an affidavit or statutory declaration.
- The goods or services in the application must be for the prevention, diagnosis or treatment of COVID-19.
- One of the following three criteria must be met:
- a Canadian court action must be underway with respect to the mark in issue in association with the goods or services listed in the trademark application;
- the applicant must be in the process of combating counterfeit products at the Canadian border with respect to the mark in association with the goods or services listed in the application; or
- approval for use of the goods or services listed in the application must have been submitted to or obtained from Health Canada.
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.
