Businesses seeking to protect brands for medical devices, protective equipment, medical services or medical research services relating to the prevention, diagnosis, treatment or cure of COVID-19 can now fast-track their Canadian trademark applications. Given the ongoing COVID-19 pandemic, the Canadian Intellectual Property Office ("CIPO") recently announced this significant change in practice. It is especially welcome given the significant trademark prosecution delays currently in CIPO.
Current trademark examination timeline
Trademark applications are generally examined in the order received by the Registrar. Requests for expedited examination are typically not considered by the Registrar, as the advancement of a trademark application out of order creates a favoured position at the expense of other applicants. The Trademarks Act and Trademarks Regulations contain no provisions concerning expediting the examination procedure for an application.
In the past, a trademark applicant would receive a first Examiner’s Report within 15 to 18 months from the filing date of an application. However, due to a backlog of trademark applications, it now commonly takes over two years for an applicant to receive a first Examiner’s Report. The newly launched COVID-19 fast-track initiative aims to expedite the examination timeline for eligible applications and help ensure Canadians have timely access to COVID-19 related goods and services.
How to qualify for the COVID-19 fast-track
Applications related to the following types of goods or services will be eligible for expedited examination:
- pharmaceuticals, medical devices (such as diagnostic tests, ventilators), or medical protective equipment (such as sanitary masks for protection against viral infections, disposable gloves for medical purposes) that prevent, diagnose, treat, or cure COVID-19;
- medical services or medical research services for the prevention, diagnosis, treatment, or cure of COVID-19.
A request for expedited examination should be made in the form of an affidavit or statutory declaration, by a person having knowledge of the facts, and should set out the specific circumstances and reasons for the request. The request must specifically set out how one or more of the following criteria are met:
- a court action is underway in Canada with respect to the applicant's trademark in association with the applied for goods or services;
- 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 applied for goods or services; and/or
- an approval for use of the applied for goods or services has been submitted to, or has been obtained from, Health Canada under the same name as the trademark.
Requests must also include the name of the applicant and, if known, the trademark application number. Each request must relate to only one trademark application, as per subsection 4(1) of the Trademarks Regulations. There is no fee associated with a request for expedited examination.
Procedure after submitting for fast-track
An accepted request for expedited examination will result in an application being examined out of order and as soon as possible. It is important for the request to be made immediately to ensure the application is examined as early as possible. Missing a deadline or requesting an extension after a request for expedited examination has been accepted may result in the applicant losing the advantage of expedited examination.
If the request is not accepted, CIPO will provide the applicant with written correspondence explaining why the request was denied. CIPO will accept requests for expedited trademark examination of these COVID-19 related trademark applications until August 31, 2021, or until the Registrar of Trademarks deems appropriate. As such, this fast-track may be extended depending on the course of the current pandemic.
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