The Canadian Intellectual Property Office (“CIPO”) has issued an important practice notice which affects Canadian trade mark applications and strategies during examination. The change, which took effect March 11, 2010, reduces the number of extensions available during trade mark examination.
After a trade mark application is filed, an examiner reviews the application to determine if the trade mark is ready for advertisement in the Trade-marks Journal. If the examiner identifies problems with the application, CIPO will issue a report to which the applicant must respond. Previously, applicants were given six months to respond to an examiner’s report and were typically permitted up to two, six-month extensions in which to file a proper response.
As of March 11, 2010, applicants now have an initial six-month period to respond to an examiner’s report, and are generally permitted to request only one extension of six months. No further extensions of time will be granted unless the applicant can demonstrate exceptional circumstances that would justify a further extension. If a proper and complete response is not filed in time, the application will be noted in default, which can lead to loss of the application. CIPO advises that this new practice applies to all applications that have already been granted extensions. As such, if an applicant has already been granted an extension of time to respond to an Examiner’s Report, as of March 11, 2010, that applicant will generally not be granted another extension to reply to the same Examiner’s Report, unless the applicant can demonstrate sufficient exceptional circumstances. CIPO has provided the following non-exhaustive list of examples it
considers to constitute “exceptional circumstances” for the purposes of seeking additional extensions of time in examination:
- a recent change in Trade-mark Agent;
- circumstances beyond the control of the person concerned;
- there has been a recent assignment of the trade mark;
- a certified copy of the registration in the office in which it was made has not yet been issued since the foreign application has yet to proceed to registration;
- if the cited co-pending and confusing mark is either possibly going to be abandoned within the next two months or is subject to opposition proceedings initiated by the applicant;
- the cited registered mark is subject to a section 45 proceeding initiated by the applicant; or
- the applicant is negotiating for a consent from the holder of an official mark.
This change in practice is the latest in a series of efforts by CIPO to expedite trade mark proceedings and requires trade mark agents and their clients to diligently address issues raised during examination.