Photo Credits: Pavel Danilyuk (Pexels)
Meena Alnajar is an IPilogue Writer, IP Innovation Clinic Fellow, and a 2L JD Candidate at Osgoode Hall Law School.
Lawyers across Canada have started to take note of the Canadian Intellectual Property Office’s (CIPO) backlog of trademark applications. Of the 209,980 trademark applications which have been filed since April 2018, 79.1% of them are active and awaiting examination as of May 2021. COVID-19 has created a more competitive online marketplace and marks can be better protected in these spaces if they are registered. Canada’s backlog thus affects applicants who wish to protect their mark in the online sphere. In response, CIPO released two notices to improve timeliness in examination and permitted requests for expedited examinations. The option to request expedited examinations, however, may not be as accessible or efficient in solving the extreme delay.
Why the Backlog
While COVID-19 has added to the delays, the trademark backlog has less to do with COVID and more to do with what legal professionals are calling the ‘Madrid effect.’ In 2019, CIPO released the Madrid Protocol to allow applicants to file a single trademark application for international registration at the parties’ office of origin (i.e. CIPO for Canadian applicants), to gain protection in several countries. Since certain deadlines are imposed on Madrid applications, some believe that CIPO may have prioritized Madrid applications, which caused a backlog for non-Madrid applications. Most non-Madrid trademark applications that have received their first examiner’s report in 2021 were filed sometime in 2018.
On May 3, CIPO released two notices in an attempt to resolve the backlog issue. The first permitted requests for expedited examination in the form of an affidavit or statutory declaration setting out the circumstances and reasons for an expedited examination request. While these requests had no fees attached, they had to be drafted on paper, mailed or faxed, and meet one of four criteria listed by CIPO:
- Court action is expected or underway in Canada with regards to the goods or services listed in the application.
- The applicant is combating counterfeit products at the Canadian border with respect to their trademark and the goods or services listed in the application.
- The applicant requires the trademark registration to protect their intellectual property from being disadvantaged in the online marketplace.
- To preserve the claim to priority within a defined deadline and following a request by a foreign intellectual property office.
- Fewer examples of goods or services that are acceptable in the statement of goods or services will be provided with the examiner’s first report.
- Applications that have statements of goods or services from the Office of the Registrar of Trademarks’ pre-approved list will be examined more quickly.
- Examiners will issue fewer reports prior to a refusal; thus, applications will be refused in a more timely manner.
Issues with Accessibility and Expediency
While CIPO has the purported goal of expediting trademark applications, the added steps to request an expedited examination could create even more barriers and further delay registration. Upon filing a request, CIPO will either accept the request and examine the application as soon as possible or reject the request and send written correspondence explaining the reasons for rejection. With no guarantee of expediting the process, CIPO’s recent measures may prove ineffective at ameliorating the trademark backlog. Further, expedited examination requests require sworn evidence which may take time and expenditures to acquire, thereby causing further delays and limiting accessibility as well. If applicants are not able to obtain sworn evidence, they will have to wait the typical 1.5-2 years to register their mark in Canada. As a result, their intellectual property will be at risk and left without protection.
A possible solution would be to expedite all applications and use these measures to improve timeliness as opposed to requiring applicants to first meet the criteria for expedited requests and submit a paper request by fax or mail. The current steps to combat a backlog may have the opposite effect in practice by extending Canada’s trademark registration timeline. The additional notices may become added barriers depending on how CIPO interprets each of the four criteria for expedited examination requests. If interpreted narrowly, trademark applicants are divided into classes of expedited and non-expedited requests. The non-expedited applicants will then be disadvantaged because they will not be able to protect their marks. If interpreted broadly, the notice may result in most applications approved for expedited examination, thus maintaining the trademark backlog. Time will tell if CIPO will successfully play catch-up with the ~161,000 pending trademark applications.