Some Small Steps by Canada to Address Trademark Examination Backlog; No Giant Leap

Canada’s Intellectual Property Office (CIPO) recently announced steps to attempt to address the growing backlog of unexamined Canadian trademark applications.  However, progress is still expected to be slow.

As of early May 2021, the average time for first examination of Canadian trademark applications is in the range of 28-30 months. While CIPO is starting to examine applications designating Canada filed pursuant to the Madrid Treaty starting in June 2019, there are still presently approximately 10,000 regular applications filed in late 2018 still awaiting examination.  Two recent practice notices issued by CIPO as well as other public statements by CIPO representatives outline steps it plans to take to try to deal with the backlog.

First, effective May 3, 2021, CIPO adopted the following practices in examination:

1. examiners will provide fewer examples of acceptable goods or services when issuing an examiner's report;
2. applications comprised entirely of goods or services from a pre-approved list (the so-called “pick list”) will be examined in priority;
3. examiners will reduce the number of reports that they issue; and
4. examiners will refuse applications more quickly and will only be required to maintain a particular submission or argument once.

Second, CIPO has expanded the list of trademark applications which may be the subject of a request for expedited examination. As with the previously announced ability to request expedited examination for applications which related to COVID-19 (reported by the E-TIPS® Newsletter here), requests for expedited examination will still have to be supported by an affidavit or statutory declaration. The additional bases for a request for expedited examination will now include, with reference to the trademark and the goods and services covered by the application:

1. litigation in Canada is underway or expected;
2. the applicant is in the process of combating counterfeit products at the Canadian border;
3. the applicant needs to protect its rights from being severely disadvantaged on online marketplaces; or
4. the applicant needs to preserve its claim to priority within a defined deadline, following a request by a foreign intellectual property office.

While the foregoing steps will be of some help in expediting certain applications (we estimate approximately 15-20% of applications may fall into these categories), for the majority of other applications, including those filed from late 2018 through early 2021, the resources devoted to giving priority to applications which qualify for expedited examination will inevitably take resources away from the examination of the others in the queue.

In that regard, representatives of CIPO have publicly disclosed steps that CIPO is trying to take to address resourcing issues. In the coming months, CIPO intends to:

1. expand the list of pre-approved goods and services, i.e. the “pick-list”;
2. hire “formalities officials” who will be one step below examiners and whose job will be restricted to reviewing applications for compliance with formalities before passing the files on to examiners;
3. increase the number of examiners and the amount of overtime allowed for examiners; and
4. hold “blitz days” on Sundays where examiners will examine pending applications in the queue.

In the longer term, CIPO is considering steps such as:

1. incentivizing behaviour by fees, e.g. lower fees for applications using only the pick-list; and
2. expanding the pick-list and aligning it with those of other countries.

CIPO is looking to replace the First-In-First-Out (FIFO) system with working backwards towards the oldest applications in the queue. CIPO has suggested that its (admittedly conservative) goal is to reduce the delay for first examination to 18 months by March 2025.

In conclusion, while CIPO is trying to take steps to address the backlog:

1. in the short term, its steps will improve the situation for a minority of applicants;
2. the present situation will only ameliorate slightly and slowly; and
3. the backlog of first examination will remain at and above 18 months in Canada for the foreseeable future.

Summary By: Gary Daniel