Trademarks Office unveils measures to ease ’embarrassing’ backlog

Intellectual Property /
John Simpson
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By Tony Poland, LegalMatters Staff • New measures designed to expedite trademark applications are certainly welcome but may not go far enough to ease a growing backlog in the Canadian Trademarks Office, says Toronto intellectual property lawyer John Simpson.

The Canadian Intellectual Property Office (CIPO) published two practice notices this month in an effort to deal with delays in processing trademark applications. But whether the changes will have a meaningful impact remains to be seen, says Simpson, principal of IP and new media law boutique Shift Law Professional Corporation. 

“One of the practice notices describes three new measures that the Trademarks Office will implement to process applications more quickly The other practice notice describes a new procedure where applicants can request expedited examination of their applications,” he tells LegalMattersCanada.ca. “But it’s not like applicants can just request it and pay a fee or something like that. Instead, expedited examinations are available only in very narrow circumstances, the existence of which must be proven with sworn evidence. This will give preference to a certain class of applicants who are well-represented by lawyers or agents who know how to prepare good evidence. 

‘What’s going to happen to the average applicant?’

“If only certain applicants in certain circumstances can take advantage of the new procedure, what is going to happen to the average applicant who doesn’t meet any of the guidelines or, if they do, who doesn’t know how to prove that they do? Are they now going to be waiting even longer because others are getting bumped ahead of them? That is essentially what caused this backlog in the first place.”

 Simpson says the delays in Canada’s trademark application process in recent years have become “sort of a source of embarrassment” compared to other countries.

For example, Simpson says a trademark application filed in the United States can typically be registered within a year. However, in Canada, the same application can still be pending after two years.

“It is an issue for  trademarks practitioners who constantly field calls from clients about this,” he says. “It puts us in a difficult position when we told clients to expect to hear something within  eight months from filing their application back in 2019. Then 18 months or even two years later, we still do not have an update.”

‘Green rush’ of trademark applications

Simpson says a number of factors have contributed to recent backlogs, including the “green rush” of trademark applications following the legalization of marijuana. 

“There were so many applicants filing potentially cool names for cannabis products that it resulted in a huge increase in volume at the trademark office,” he says.

At the same time, Canada joined the Madrid Protocol, an international trademark filing system. 

“It was meant to bring Canada more in line with other international countries. Most Western countries are part of this filing system as well,” Simpson explains. “This led to a tremendous surge in international applications coming through the Madrid system that were jumping ahead of applications that had already been filed in Canada.”

He says amendments to the Trademark Act in 2019 contributed to a perfect storm “and all those factors have led to the backlog and delay we now experience.”

“The volume of domestic and foreign applications in the Canadian Trademarks Office has increased significantly without an increase in well-trained or experienced staff,” Simpson says. “Those pressures have prompted  the office to look for solutions.”

Applicants can now request expedited examinations

CIPO will now accept requests for expedited examination in the form of an affidavit or statutory declaration if one or more of the following conditions are met:

  • 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;
  • The applicant is in the process of combatting counterfeit products at the Canadian border with respect to the applicant’s trademark in association with the goods or services listed in the application;
  • The applicant requires registration of its trademark in order to protect its intellectual property rights from being severely disadvantaged on online marketplaces; or
  • 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. Note that in such cases the request will need to be attached to the affidavit or statutory declaration.

Simpson says that while each of these circumstances certainly warrants expedited examination the new practice “puts a real burden on the applicant without any assurances that the effort will pay off.”

‘They are not making any guarantees’

“As well, they haven’t said how expedited it is going to be. It’s sort of like, make your case and we’ll decide what to do about it,” Simpson adds. “I expect that if you meet any of those four circumstances, several months will be shaved off the examination process but they are not making any guarantees.”

He says that expedited examination will be particularly helpful for trademark owners trying to enforce their rights in online marketplaces.

“More and more we see clients filing applications or getting registrations for the primary purpose of enforcing their rights online,” Simpson explains. “Online marketplaces and forums often require trademark registrations before they’ll do anything to protect your rights. You can’t just tell them you’ve been using a name for a long time and have a reputation to protect. They will ask for the registration. If you’re in Canada and it’s taking you more than two years to get your registration, you can be put at a real disadvantage.

”Overall, it’s good to see that situations like that are being addressed” he adds. “But I would much prefer to see more emphasis given on what the Trademarks Office can do to speed up all applications instead of focusing on what certain applicants can say to make their application go faster.”