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Amendments to Trademark Laws

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Mai 20, 2021 (Newsletter Issue 10/21)
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Practice Change in Examination Due to Backlog

On May 3, 2021, the Canadian Intellectual Property Office (CIPO) published two new practice notices: "Measures to improve timeliness in examination" and "Requests for expedited examination". The actions being taken by CIPO are in response to higher filings of trademark applications than anticipated. Effective immediately the following practices will be followed during the examination of a trademark application.

Measures to Improve Timeliness in Examination
- Suggestions related to acceptable goods or services: Examiners will provide fewer examples of goods or services that would be considered acceptable when issuing an examiner's report.
- Some applications will be examined more quickly: Applications which use only pre-approved goods or services from CIPO's Goods and Services Manual will be examined more quickly.
- Fewer examination reports prior to refusal: Examiners will reduce the number of reports issued to applicants and CIPO will reasonably refuse trademarks in a more timely manner. To this end, examiners will only be required to maintain a particular submission or argument once.

Requests for Expedited Examination
CIPO announced that the IP Office will begin accepting requests for expedited examination in the form of an affidavit or statutory declaration, by a person having knowledge of the facts, setting out the specific circumstances and reasons for the request.

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;
- counterfeit products at the Canadian border will be combated;
- registration of a trademark is required due to strong disadvantage in online marketplaces; or
- registration of trademark is required to protect its priority claim within a certain period and after request by a foreign IP Office.

For more information, please click on the notice links above.