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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:
- a recent change in trademark agent;
- circumstances beyond the control of the person concerned (eg, illness, accident, death, bankruptcy or other serious and unforeseen circumstances);
- a transfer (ie, where there is a pending assignment that would overcome the citation);
- where opposition proceedings are pending against the cited mark;
- where Section 45 non-use cancellation proceedings are pending against the cited mark;
- an official mark (ie, where the applicant is in the process of actively negotiating a consent from the holder of an official mark);
- the division of a Madrid Protocol application;
- responding to a substantive objection (eg, a confusion, descriptiveness or inherent distinctiveness objection); and
- compiling evidence of distinctiveness.
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.