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Since the implementation of the modernized Trademark Act, the Canadian Trademarks Office began accepting requests for expedited examination (as of May 3, 2021).

This was welcome news to many given the significant delay at the Canadian Trademarks Office (2-3 years).

In order to be eligible for expedited examination however, trademark owners must be able to meet at least one of the following criteria:

  • A court action is expected or underway in Canada;
  • The applicant is in the process of combating counterfeit products at the Canadian border;
  • 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.

For those owners that do not meet any of the above criteria, we suggest filing new applications using pre-approved descriptions found in the Canadian Goods & Services Manual. This in of itself will put you ahead of those using more uniquely drafted descriptions.

In summary, the Canadian Trademarks Office is well aware the delay on their part is frustrating to trademark owners and practitioners. In fact, the Office has recently released a Notice to practitioners summarizing the number of newly approved goods and services that have been included in the Goods and Services Manual and have once again provided us with the means and contact information for adding to this ever-growing list.

If you are requiring expedited examination of your trademark, please reach out to our IP Team.

Author(s)

This content is not intended to provide legal advice or opinion as neither can be given without reference to specific events and situations. © 2021 Nelligan O’Brien Payne LLP.

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