Effective January 1, 2024, CIPO has introduced new service standards for examination of trademark applications in Canada.  The new service standards are intended to significantly reduce the timeline for examination of Canadian trademark applications and to enhance predictability for applicants.

Before the new service standards came into effect, Canadian trademark applicants faced a wait time of up to 60 months (or 5 years) from the time a trademark application was filed to the time the application was examined, owing to a very significant backlog of application filings.

Under the new service standards, CIPO is required to issue a first action (such as a first examiner’s report) within 18 months from the filing date of an application filed using the pre-approved list of goods/services, and within 28 months from the filing date of an application filed without using the pre-approved list of goods/services.

In addition, CIPO will issue a first action within 12 months upon receipt of a request for public notice of a prohibited mark (including an official mark) filed under Section 9 of Canada’s Trademarks Act.  Prohibited marks include trademarks adopted and used by government entities and other public authorities.

Under the new service standards, Canadian trademark applicants are incentivized to pursue trademark application filings using the pre-approved list of goods/services listed in the CIPO Goods and Services Manual (the “Manual”) in order to cut up to 10 months of time from the trademark registration process, compared to pursuing a filing without using the pre-approved list of goods/services.  Importantly, it will not be prudent to pursue trademark applications using the pre-approved list of goods/services in every case since the pre-approved list is limited in scope and does not include suitable goods/services listings for all possible goods/services offered by a business or organization. However, it is possible to file a request with CIPO to add goods and services descriptions to the pre-approved list in the Manual. CIPO typically responds to the request within three to five weeks. This option can be particularly helpful where an applicant includes the same goods or services in multiple applications and wishes to minimize examination time by filing using only the pre-approved list in the Manual.

The information below summarizes the new service standards as of January 1, 2024:

  • Request for giving public notice for a badge, crest, emblem, mark or armorial bearing:
    • CIPO will complete a first action (public notice of the prohibited mark in the Trademarks Journal or first report) within 12 months upon receipt of a compliant request and payment of the prescribed fee.
  • Application for the registration of a trademark – Online:
    • CIPO will send a first action (approval or first report) within 18 months from the filing date of a domestic electronic application that is filed using the pre-approved list of goods and services and payment of the prescribed fee.
    • CIPO will send a first action (approval or first report) within 28 months from the filing date of a domestic electronic application that is filed without using the pre-approved list of goods and services and payment of the prescribed fee.
  • Application to  extend the statement of goods or services of a trademark registration:
    • CIPO will send a first action (approval or first report) within 28 months from the filing date of a paper application and payment of the prescribed fee.

Importantly, when a service standard is not met, CIPO is required to remit a portion of the fees paid by the trademark applicant (known as a remission), provided other conditions for remission are met.  The amount to be remitted depends upon the degree to which the service standard was not met.  For example, if the service standard was missed by 50% or less of the standard, then the remission will be 25% of the fee paid.  If the service standard was missed by more than 50% of the standard, CIPO will remit 50% of the fee paid.

The revised service standards only apply to trademark applications filed on or after January 1, 2024, meaning that issuance of first actions for  applications filed before January 1, 2024 may continue to be materially delayed.

In addition to the new service standards set out above, Canadian trademark applicants are entitled to pursue expedited examination of their applications in the following cases:

  1. 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;
  2. 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;
  3. The applicant requires registration of its trademark in order to protect its intellectual property rights from being severely disadvantaged on online marketplaces; or
  4. 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.

If the request for expedited examination is accepted, CIPO will examine the application as soon as possible (i.e. within days to a few weeks as opposed to months or years).

If CIPO meets the level of service set out in the new service standards, it will be a welcome change for trademark applicants in Canada.

Should you have any questions regarding the trademark application filing process in Canada, or require any assistance with Canadian trademark filing or prosecution matters, please do not hesitate to reach out to a member of Miller Thomson’s Intellectual Property team.