Significant Change to Canadian Trade-mark Prosecution Practice Concerning Extensions of Time to Respond to Examiner’s Reports

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The Canadian Intellectual Property Office (CIPO) recently announced a significant change to its practice regarding the grant of extensions of time in its examination of Trade-mark Applications. As of March 11, 2010 CIPO will only grant one extension of time for a period of up to six months following the initial deadline in which to respond to an Examiner’s Report, unless the Applicant can demonstrate that exceptional circumstances exist to justify a further extension of time. It appears that this change of procedure will apply to all applications, whether filed before, on or after March 11, 2010. CIPO normally provides a period of six months to respond to an Examiner’s Report, so coupled with a single six month extension, the total time to respond in the absence of exceptional circumstances will be twelve months from the date of the Examiner’s Report. This is in marked contrast to current practice, in which multiple extensions of time are typically granted by CIPO, with little to nothing in the way of substantive reasons being required to justify such further extensions.

CIPO’s examples of “exceptional circumstances” that might justify further extensions of time include a recent change in the Trade-mark agent for the Applicant; a recent assignment of the trade-mark; circumstances beyond the control of the person concerned (such as illness, accident, death or bankruptcy); a certified copy of a corresponding foreign registration being unavailable because the foreign application hasn’t yet issued to registration; a cited prior application has been made the subject of opposition proceedings by the Applicant; or a cited prior registration has been made the subject of summary expungement proceedings by the Applicant.

Some of these exceptions raise additional issues. For example, while it will be possible to obtain a further extension of time in order to submit certified copies of corresponding foreign registrations relied upon in the Canadian application where such foreign registrations haven’t issued yet, all other aspects of the Examiner’s request will apparently have to be addressed prior to the original extended deadline. Another issue pertains to cited prior applications being opposed (or registrations being expunged) by a party other than the Applicant. In such circumstances, it is not clear if the Applicant can rely upon a proceeding in which it is interested but not formally involved, to justify a further extension of time.

Additionally, with respect to applications filed on the basis of application and “intent to use” abroad (sometimes known as a “modified s. 16(2)” claim), it is not clear if the failure for use to have commenced in the foreign jurisdiction prior to the deadline for responding to the Examiner’s report will justify a further extension of time. CIPO recently conducted a public consultation concerning s. 16(2) claims, and we are hopeful CIPO will provide some clarity concerning this practice shortly.

The full text of CIPO’s Practice Notice limiting extensions of time can be found online. Additional analysis can also be found in a post on our Canadian Trade-mark Blog.

Please contact us if you would like to discuss this change in practice and the potential affect on pending or proposed Canadian trade-mark applications.

Neil Melliship – npm@cwilson.com or 604.643.3154
Jeffrey Vicq – jfv@cwilson.com or 604.643.3178
Karen Monteith – kar@cwilson.com or 604.643.3104