CIPO Accepting Requests for Expedited Examination of Trademark Applications

published 06/08/2021

The Canadian Intellectual Property Office (CIPO) is now accepting requests for expedited examination of trademark applications. CIPO made this announcement by way of a practice notice published on May 3, 2021, stating that effective immediately, it would be accepting such requests in order to address the current wait times at the examination stage of a trademark application.

In order to be accepted by CIPO, requests for expedited examination must meet one or more of the following criteria:

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. Note that in such cases the request will need to be attached to the affidavit or statutory declaration.

Applicants may make a request for expedited examination in the form of an affidavit or statutory declaration by a person having knowledge of the facts. The request must clearly set out how one or more of the criteria are met. In addition, requests must include the name of the applicant and the application number (if known), and may not relate to more than one trademark application. There is no fee associated with a request for expedited examination.

If the request is not accepted, CIPO will send written correspondence to the applicant explaining the reasons for the denial. If the request is accepted, CIPO will examine the application as soon as possible.

CIPO has not indicated what exactly it means by “as soon as possible”, however the publication of this practice notice indicates that CIPO is committed to improving the wait times associated with the examination of trademark applications.

If you are interested in getting assistance to request an expedited examination of your trademark please contact us.

The Author(s)