Requests For Expedited Examination
In order to formalize trademark protection in Canada, it is necessary to obtain a Canadian trademark registration. Granting trademark registrations is governed by the Trademarks Office, which is in a department of the Canadian Intellectual Property Office, which is part of Industry Canada. If you would like to read more about the benefits of registering a trademark, click here for our previous article: Trademarks: An Invaluable Asset for any Consumer Facing Company (froeselaw.com)
Over the past few years, the Trademarks Office has become painstakingly slow in its review of the new trademark applications. In fact, we have noticed that the time it takes for the Trademarks Office to examine newly filed trademark applications has gone from approximately 10 months to now sometimes in excess of 2 years. This insufferable delay is beyond frustrating, and possibly detrimental, to brand owners. And a constant source of frustration for us, as we try to encourage the Trademarks Office to speed up the review of our clients’ trademark applications.
Recently, the Trademarks Office has enacted a new protocol that may bring some assistance to the issue of delayed examinations of trademark application: the ability to request expedited examination of a trademark application.
How To Get An Expedited Examination?
The Trademarks Office will now accept requests for an expedited examination in the form of an affidavit or statutory declaration by either the applicant, trademark agent or lawyer. The affidavit or statutory declaration must clearly set out how one or more of the following criteria are met:
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;
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;
The applicant requires registration of its trademark in order to protect its intellectual property rights from being severely disadvantaged on online marketplaces; or
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. Note that in such cases the request will need to be attached to the affidavit or statutory declaration
How Can I File A Request?
Froese Law is your ally for success. We can assist with getting your trademark application an expedited examination. It is important to abide by the Regulations in which a request for expedited examination must not relate to more than one application for the registration of a trademark.
What Happens After the Request is Submitted?
After the request for expedited examination is filed, it may either be accepted or denied. If it is accepted, the Office of the Registrar of Trademarks will examine the application. If the request for expedited examination is denied, the Trademarks Office will send written correspondence to the applicant explaining why the request was denied.