An increase in filings following accession to the Madrid Protocol has led to examination delays in Canada. Sanjukta Tole, of the International Trade Mark Law and Practice Team, explains what is being done to address the backlog.

Since Canada’s accession to the Madrid Protocol, there has been a significant uptick in the number of applications filed, which is great news! The number of International Applications or Registrations designating Canada are up to almost 40,000 in less than 24 months.

However, this bump in filings has resulted in significant delays at the Canadian Intellectual Property Office (CIPO) in processing pending applications. Applications filed under the Madrid Protocol are required by statute to be examined within 18 months of receipt by CIPO. National applications can currently take over 30 months for first examination.

In addition, piecemeal and inconsistent examination have been recurring issues that applicants in Canada face, which have resulted in further delays to obtaining registration.

CIPO policy changes

In order to address the backlog of applications awaiting examination, CIPO has announced a few policy changes:

(1) The option for expedited examination of trade mark applications upon request. Such requests must be in the form of an affidavit and clearly identify one or more of the circumstances:

• Court action related to the trade mark
• Attempt to stop counterfeit products bearing the trade mark at the Canadian border
• To protect rights from being severely disadvantaged on online marketplaces
• To preserve its claim to priority and meet requirements set by a foreign intellectual property office

(2) Changes in practice to improve examination turnaround, including:

• Applications filed with pre-approved goods and services will be examined more quickly.
• Reducing the number of reports issued by refusing trade marks if an objection is maintained after one round of arguments

(3) Adding new acceptable terms to describe goods and services to CIPO’s Goods and Services Manual on a weekly basis to improve the scope of the Manual and provide applicants with certainty when filing an application.

Welcome developments but some concerns

Efforts by CIPO to address the delays around examination through open dialogue with stakeholders and industry have been most welcome. CIPO has also attempted to provide greater resources for training examiners and keeping the profession up to date on its approach to the new statutory provisions.

While this multi-pronged approach should assist CIPO to process pending applications sooner eventually, there are some concerns around these policies. There is no commitment from CIPO as to how quickly applications will be examined if a request for expedited examination is made and may be an expensive and potentially time-consuming effort. Even if the application receives the benefit of expedited examination, it may be months before a registration issues and such a timeline may not be compatible, particularly with court-based proceedings.

There may also be other delays downstream. For example, all refusals can be appealed by right to the Federal Court of Canada. The refusal of applications only after one round of arguments against any objections could results in significant uptick in appeals to the Federal Court. Appeals are also far more expensive than getting a chance to submit further arguments to the Trademarks Office.

Notwithstanding these reservations, there is hope that over time CIPO’s approach will be finessed such that national and Madrid Protocol applications will both be dealt with in a timelier fashion.

Sanjukta Tole is a Partner of Marks & Clerk Law LLP in Toronto and a member of the MARQUES International Trade Mark Law & Practice Team