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Obtaining a Trademark: Navigating the Process

Obtaining a Trademark: Navigating the Process

Due to a huge backlog of cases due to an increase in filings, a lack of staff, international treaties and the COVID-19 pandemic, a process that used to take about 18 months to complete now takes more than 3 years. Trademark applicants are currently experiencing significant delays in the registration of their trademark applications. This backlog has prompted the Canadian Intellectual Property Office (CIPO) to take action. It has since released two new practice notices to specifically deal with this growing issue.

Securing Your Trademark in 2021

If you are filing a trademark application, there are a few things you need to know about before getting started. CIPO has provided a mechanism to speed up the registration process under specific circumstances. Ensuring that all of your information is correct and that your goods and services are described properly can go a long way in speeding up the process, particularly if an Examiner's Report is avoided.

What Do the New Practice Notices Contain?

CIPO has acknowledged the extensive delays and has taken steps to improve the process for agents and applications. Below is some basic information about two recently released practice notices:

Practice Notice #1 - Expedited Examination Requests

CIPO will begin to accept expedited application requests for certain trademark applications. There are specific criteria that must to be met for the expedited application to be approved and the practice notice provides four instances where expedited examination can be obtained. One of the following criteria must be met to obtain expedited examination:

  1. Current or pending court action in Canada in relation to the trademark.
  2. The Applicant is combating counterfeit products at the Canadian border in relation to the trademark.
  3. Registration is required to protect intellectual property rights from being disadvantaged online.
  4. Registration is required to preserve a claim of priority in a foreign jurisdiction.

Practice Notice #2 - Speedier Processing Time

There are measures that may be taken to hasten the processing time of patent applications. Up to 15% of the applications that are filed have goods or services that have been selected from a pre-approved list. Applications that have goods and services that have been selected from this list may be examined more quickly than those that did not pre-select from this list.

Conclusion

If you are in the process of obtaining a trademark, it is important that you are aware of these two new updates as they may allow you to obtain a registration more quickly. It is important that you submit all the necessary documents and supporting paperwork when you initially file for your trademark application. This will help you avoid having to incrementally provide these bits of information to the CIPO when they ask for it, making the process more time-consuming. Should you need any assistance getting all your documentation together prior to submitting your application, working with a registered trademark agent is a good idea.

Need help filing your trademark? We would be happy to provide assistance. Contact us at (587) 400-8063.

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