The Canadian Intellectual Property Office (CIPO) has recently announced further details in its quest to start slaying the dragon of mounting trademark examination backlogs.
Regular readers of our E-TIPS newsletter will know that the state of trademark examination has been a frequent topic for many years but that, earlier this fall, we gave some reason for hope starting next year (see here for a previous report by the E-TIPS® Newsletter).
In a presentation at the International Trademark Association meeting in November, CIPO detailed some recent developments. CIPO has hired over 100 trademark examiners in 2023 alone. The ability of examiners to work remotely is expected to reduce attrition. CIPO expects to double examination capacity in 2024 and 2025. By 2026, it hopes to examine in the vicinity of 300,000 Canadian trademark applications.
The current backlog of Canadian trademark applications awaiting examination is approximately 185,000. CIPO hopes to reduce the backlog to 65,000 by the end of 2025.
To further assist in examination, CIPO plans to employ automated solutions to assist examiners in preparing examination reports and will continue to increase the list of pre-approved terms in the Goods and Services manual (the so-called “picklist”).
CIPO has also proposed amendments to its service standards for trademarks. Among the most significant amendments, CIPO proposed a service standard for applicants to receive a first action (approval or first report) as follows. For applications filed online which consist exclusively of goods and services on the picklist, CIPO’s service standard will be to send a first action within 18 months from filing. The standard rises to 28 months for applications which contain non-picklist goods and services, or which are filed on paper.
CIPO proposed that the service standards come into effect on January 1, 2024 and has invited comments by December 8. We understand there is resistance within the profession to any implementation of a system at this time which would result in a diversion of resources from the reduction of the backlog at examination. In light of this, we will wait for CIPO's determination of this issue.
It is said that one eats a large elephant a small piece at a time. We look forward to seeing whether these small steps will help CIPO slay the large trademark examination backlog dragon once and for all.
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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