Accelerating Intellectual Property Registration in Canada
Filing a trademark, copyright, patent or industrial design application in Canada is only the first step in obtaining a registration for your intellectual property rights.
After filing, there is generally a long waiting period before your application is examined by the Canadian Intellectual Property Office (CIPO). For patents, trademarks and industrial designs, this process typically takes at least two years. This can create a great deal of uncertainty for businesses when planning substantial investment in their brand or product. For other businesses, this delay can also be problematic as they deal with brand hijackers or counterfeiters on online e-commerce platforms such as Amazon.
Thankfully, there are ways to speed up the examination process for each of the different types of IP applications.
The current wait time for a trademark application to be examined by CIPO is at least 2.5 years. However, earlier this year, CIPO published a practice notice outlining a few situations where a request can be made to expedite examination of a trademark application:
A Canadian court action is underway or expected with respect to the trademark;
The applicant is in the process of combating counterfeit products associated with the trademark at the Canadian border;
The applicant requires registration of its trademark to protect its IP rights from being severely disadvantaged on online marketplaces; or
The registration of the trademark is required to preserve a priority claim within a defined deadline and following a request by a foreign intellectual property office.
(From a previous practice notice) An approval for use of the goods or services listed in the application has been submitted to, or has been obtained from, Health Canada under the same name as the trademark.
Situation 3 above is common for online brand owners (such as Amazon sellers) who are being disadvantaged by brand hijackers or counterfeiters who use the brand owner’s listings to sell and promote their own products. The hijackers and counterfeiters compete directly with the brand owner and can potentially negatively impact the ratings of the product by providing inferior service or products.
As mentioned in another article, Amazon has in place its own IP Accelerator and Brand Registry program to allow brand owners to protect their brands while their applications are pending. However, certain enforcement features (such as the ability to report counterfeit products) may still be limited until the trademark issues to registration.
In the presence of hijackers and counterfeiters, an Amazon brand owner cannot wait three years for their trademark to be registered, and will likely continue to suffer significant losses during this period. In these situations, the brand owner may be able to request expedited examination of their trademark application if they can demonstrate the urgency of the request. If the request is accepted by CIPO, the trademark will be examined within weeks, and a registration may be issued shortly following the two month advertisement period after approval.
To request expedited examination of a trademark application, the applicant is required to furnish a sworn affidavit with evidence outlining in detail how their rights are being disadvantaged on the online platform. Note that an expedited examination does not guarantee approval of the trademark application. If there are problems with the application, such as potential confusion with another trademark, an office action (objection) may still be issued by CIPO, albeit much more quickly than usual.
JZC Intellectual Property Law has helped a number of Amazon seller clients successfully expedite their trademark applications through this process.
Patents and Industrial Designs
The current examination wait time for patent and industrial design applications is also approximately 2 years.
To expedite patent and industrial design applications, an advanced examination fee can be paid at filing or made after filing. Upon receiving the advanced examination request (and payment of the fee), the application may be examined within 7 months for patents and 12 months for industrial designs.
CIPO currently does not offer an expedited examination option for copyright applications, because copyright registrations are typically issued within several weeks after submitting the application.
Note that the time estimates provided above are subject to change at CIPO’s discretion; for up to date information on CIPO’s service standards, please click here.
Please feel free to contact us for more information on expediting your intellectual property applications.
Disclaimer: The resources published on this website are available for informational purposes only and should not considered legal advice on any subject matter. By viewing these resources, the reader understands there is no solicitor client relationship between the reader and JZC Intellectual Property Law. This website should not be used as a substitute for legal advice, and readers are urged to consult legal counsel on any specific legal questions concerning a specific situation.