On January 17, 2020, the Canadian Trademarks Office (the Office) published a new practice notice regarding extensions of time in trademark examination. 

The practice notice states that the Office will no longer grant extensions of time to respond to an examiner’s report unless the applicant demonstrates “exceptional circumstances”.  In other words, the six month response deadline set out in an examiner’s report will not be extendable absent exceptional circumstances.

For example, the Office considers the following to constitute exceptional circumstances:

  • recent change in trademark agent;
  • circumstances beyond the control of the applicant, such as illness or bankruptcy;
  • a transfer request is pending at the Office, and once recorded, said transfer would overcome a confusion objection;
  • a cited co-pending and confusing trademark is the subject of a pending opposition proceeding; or
  • the applicant is in the process of negotiating consent from the holder of an official mark.

Applicants may also request an extension of time to prepare and file a response to substantive objections, such as those relating to confusion, descriptiveness or inherent distinctiveness.  However, the applicant may only request an extension of time for this reason once during prosecution.

Given that there is no online filing service dedicated to divisional applications, the Office also amended the practice notice on Divisional applications and the merger of registrations  to specify the process for filing a divisional application.  The practice notices on Renewals and Temporary Appointment of Trademark Agent were also amended to include sections on Nice Classification.

For more details, please see the practice notices or contact a member of DWW’s Trademark Group.

Summary By: Michelle Noonan


20 01 29

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