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Executive Summaries May 17, 2021

Accelerating the Registration of Your Trademark Is Now (Potentially) Possible!

If you have filed an application to register your trademark, you have surely noticed that patience is required.  Indeed, the delays in obtaining a trademark registration in Canada have considerably increased in the last few years.

Currently, a trademark application is not examined by the Registrar of Trademarks before approximately 24 to 27 months from its filing date.  And if no objection is raised or oppositions filed by third parties, the certificate of registration will only be issued 30 to 32 months after the application’s filing date.

Hope on the Horizon

However, a new Practice Notice issued by the Canadian Intellectual Property Office indicates that it will, from now, on possible to request an expedited examination of trademark applications in certain circumstances.

It is now possible to file acceleration requests, with no government fees applying, in the following scenarios:

  • 1. If a court action is expected or underway in Canada with respect to the applicant's trademark in association with the goods or services listed in the application;
  • 2. If the applicant is in the process of combating counterfeit products at the Canadian border with respect to the applicant's trademark in association with the goods or services listed in the application;
  • 3. If the applicant requires registration of its trademark in order to protect its intellectual property rights from being severely disadvantaged on online marketplaces; or
  • 4. If the applicant requires registration of its trademark in order to preserve its claim to priority within a defined deadline and following a request by a foreign intellectual property office.

In support of this request, an affidavit or statutory declaration must be provided.

Scenarios 1, 2 and 4 are easily conceivable and can probably be easily demonstrated.  The third scenario, however, has particularly caught our attention.

Preventing Serious Disadvantages on Online Marketplaces

The potential serious prejudice on online markets may take many forms.  We can imagine the case where the applicant needs a registered trademark in order to be allowed to sell its products online on third parties’ platforms.  Or the subscription to the Trademark Clearinghouse, which requires a registered trademark, for the monitoring of the registration of domain name extensions corresponding to the trademark. This requirement of a registered trademark also applies to registration with the Amazon Brand Registry, which allows for greater brand protection on the Amazon platform. These scenarios, and any other related to online markets, remain however to be tested.

In the event that the applicant needs to register its trademark due to its activities on online markets, the affidavit or statutory declaration required to obtain the expedited examination will have to state the actual prejudice suffered, either a loss of rights or a monetary loss.

If the request for expedited examination is granted, the application will be reviewed “as soon as possible”. It is not yet possible to predict the time frame that can be expected for the expedited review, but it can only be shorter than the usual one of approximately 24-27 months.  If the request is accepted, the applicant will not be able to request extensions of time, otherwise the application will lose the benefit of the expedited examination. The same will apply if a deadline is not met.

If the request is denied, the reasons for the denial will be provided in writing.

In short, this new practice could potentially allow you to get your registration sooner than expected!

If you are still waiting for your trademark application to be examined, our trademark team will be happy to see if you can qualify for an expedited examination.

Stay on the lookout!

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