Pedal to the Metal: Canada’s Trademarks Office Hits the Gas With New Examination Service Standards

As of January 1, 2024, the Canadian Intellectual Property Office (CIPO) expects to introduce amendments to certain of its trademark service standards that would see a dramatic drop in the amount of time between the filing of a domestic trademark application and examination. CIPO’s goal is to enhance predictability for clients and uphold their commitment to delivering timely services.

Currently, the only service standard associated with an electronic application for the registration of a trademark is that CIPO will send a filing notice within 2 weeks of receipt of (1) an electronic application that is compliant with filing requirements, and (2) payment of the prescribed filing fee.  However, with the amendments expected to take effect as of January 1, 2024, the service standards associated with trademark applications filed through CIPO’s online system would no longer be tied to the filing notice, but instead would be tied to examination, as follows:

• CIPO will send a first action (approval or first examiner’s 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 examiner’s 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.

CIPO continues to expand its Goods and Services Manual in an effort to encourage applicants to take advantage of the “accelerated” examination stream (currently 20 months) for applications filed covering exclusively pre-approved terms. The amendment above would mean that, for applications filed on or after January 1, 2024, not using the pre-approved list of goods and services from the Goods and Services Manual, examination should be nearly twice as fast, going from the current 54 months to 28 months.

If realized, this significant improvement in trademark examination time will represent the success of CIPO’s recovery efforts over the past several years, including the onboarding of more than a hundred new trademark examiners, and will be a welcome change for businesses and individuals seeking to protect their trademarks in Canada.