Trade-Mark Prosecution: More Hurry, Less Wait

Canadian trade-mark applicants and their agents must continue to be mindful of a trend at the Canadian Intellectual Property Office (CIPO) to compress timelines for trade-mark prosecution and proceedings.

After months of consultation period, CIPO has released a new Practice Notice on January 11, 2010 on extensions of time in trade-mark examination. Effective March 11, 2010, the Trade-marks Office will generally grant an applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiner’s report, if the request is justified. No requests for any further extensions of time will generally be considered unless the applicant can demonstrate exceptional circumstances for failure to file a “proper response”. Furthermore, the Office considers that a proper response consists of a response wherein all of the Examiner’s objections and/or requests have been addressed.

The Practice Notice outlines some examples of exceptional circumstances that would justify a further extension of time, such as a recent change in trade-mark agent, assignment of the mark, awaiting certified copies of a corresponding foreign pending application, resolving a confusion objection due to a possible change in status of the cited mark, a dispute over that mark, or seeking consent from an official mark holder, and other serious and unforseen circumstances.

This change means that Canadian trade-mark applicants and their agents will have less flexibility and less time in which to keep applications pending, and may likewise increase pressure on agents and applicants to confirm their strategy and prepare a full response to the Examiner under a compressed timeframe.