Regular readers of the E-TIPS® Newsletter will know that the backlog of the examination of Canadian trademark applications has been a source of commentary for the past several years. 2024 may bring with it some reason for optimism.
The Canadian Intellectual Property Office (CIPO) is still examining applications filed in early Q2 of 2019. Backlogs in first examination of most applications currently range from 17 to 52 months from filing.
However, there are reasons to believe that the backlogs may lessen starting in 2024.
First, CIPO has made some progress in clearing the backlog of applications filed before June 17, 2019. The backlog of such applications is down to about 8,000.
Second, for applications filed after June 17, 2019, CIPO has already examined many of those which either: (1) were filed pursuant to the Madrid Convention; or (2) consist exclusively of a pre-approved list of goods and services (the so-called “picklist”). The backlog of examination of such applications is currently about 17 -19 months. Thus, once CIPO clears the backlog of applications filed before June 17, 2019, there will be fewer newer applications to examine.
Third, since Canadian applications filed after that date must be divided into classes of goods and services pursuant to the Nice Convention, the need to examine applications for classification should diminish significantly.
Fourth, the early days of the pandemic saw a slight dip in applications filed.
Fifth, the picklist continues to grow. As the picklist grows, fewer applications will need to be examined for compliance with respect to the descriptions of goods and services, further speeding examination of applications.
Six, and perhaps most significantly, CIPO has approved an approximately 25% increase in many of its fees, starting January 1, 2024. To the extent that some of the delays in examination have been related to staffing issues, if the increased fees result in greater revenues for CIPO, (and we do not anticipate a significant drop-off in applications because of the increased fees) CIPO should be able to hire, train and retain more trademark examiners. CIPO is in the process of hiring and training approximately 100 new examiners, which it hopes to be able to deploy to assist with tackling the backlog of examination of domestic applications by Q2 of 2024.
As the pandemic waned, CIPO said that it hoped to return examination of trademark applications in Canada to closer to a more historical speed of examination by 2025. At the time, that forecast seemed overly conservative. Now it appears to have been prescient.
Until then, however, for the reasons mentioned above, 2024 may finally be the year that CIPO turns the proverbial corner on clearing the backlog of examination of Canadian trademark applications.
Summary By: Gary Daniel
Disclaimer: This Newsletter is intended to provide readers with general information on legal developments in the areas of e-commerce, information technology and intellectual property. It is not intended to be a complete statement of the law, nor is it intended to provide legal advice. No person should act or rely upon the information contained in this newsletter without seeking legal advice.
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