On January 11, 2010, the Canadian Intellectual Property Office (“CIPO”) issued a Practice Notice regarding Extensions of Time in Trade-mark Examination (hereinafter referred to as the “New Practice Notice”), which will come into effect on March 11, 2010.
Specifically, the New Practice Notice states that as of March 11, 2010, an applicant will generally only be granted one (1) extension of time of up to a maximum of six (6) months within which to file a proper response to an Examiner’s Report (Office Action), so long as the request is justified. Further requests for extensions of time will generally not be considered.
If after the expiration of twelve (12) months from the date of issuance of an Examiner’s Report, an applicant is unable to provide the CIPO with an adequate response, the applicant will be considered to be in default in the prosecution of its application unless the applicant is able to demonstrate that it was prevented from submitting a proper response, due to exceptional circumstances.
A proper response is considered to be a response that addresses all of the objections and/or requests raised within an Examiner’s Report.
The CIPO has indicated that any of the following examples could justify a further extension of time, on the basis of demonstrating exceptional circumstances:
Recent Change in Trade-mark Agent
Intended to allow the new Trade-mark Agent time to become familiar with the file.
Circumstances beyond the control of the person concerned
May include illness, accident, death, bankruptcy or other serious and unforseseen circumstances.
If the trade-mark has very recently been assigned.
Certified copies If a foreign application, upon which the Canadian application relies, has yet to proceed to registration.
Citation - Pending Application
In the event that a co-pending and confusing application has been cited in an Examiner’s Report, an extension may be granted if: a) there is a possibility that the co-pending application is going to be abandoned in the next two months; or b) the co-pending application is the subject of opposition proceedings initiated by the applicant.
Citation - Registered Mark
In the event that a registered mark has been cited in an Examiner’s Report, an extension may be granted if the registered mark is the subject of Section 45 proceedings initiated by the applicant.
If the applicant is negotiating with the holder of the Official Mark, regarding its consent.