Applicants filing trademarks in Canada have become increasingly frustrated with long wait times over the period from filing a trademark application through to examination. The Canadian Intellectual Property Office is currently examining trademark applications that were filed in November 2018, meaning that the timeline from filing to examination is now standing at 30 months. Given the extremely high volume of trademark applications that were filed in the first half of 2019, ahead of the coming-into-force of Canada’s new trademark law on June 17, 2019, it is very likely that this long wait time will continue to increase for the foreseeable future.
On May 3, 2021, the Canadian Intellectual Property Office introduced a new Practice Notice allowing for expedited examination of trademark applications falling under certain noted exceptions. This is a notable change in practice, as expedited examinations have not been possible in Canada for many years. There are four enumerated circumstances where expedited examinations will be considered:
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.
The request must be made by way of a sworn affidavit or statutory declaration outlining the circumstances of the request and how the application meets one or more the criteria set out in the Practice Notice.
Since this practice was just introduced, it is not yet clear how quickly these requests for expedited examination will be moved through the system, or how liberally the requests will be granted. An important note for those considering making a request for expedited examination is that the Office warns that once the application has been expedited, any request for an extension of time or missed deadline could result in the expedited status being removed.