Trademark Backlog

CIPO has published two practice notices directed to the backlog of trademarks awaiting examination:

  • Requests for expedited examination – “effective immediately the Office will begin accepting requests for expedited examination of trademark applications” on the basis of court proceedings, combating counterfeit products, protect marks on online marketplaces, or to preserve claims of priority.
  • Measures to improve timeliness in examination – the Office will prioritize applications with statements of goods or services selected from the pre-approved list, issue fewer examination reports prior to refusal, and will provide fewer examples of goods or services that would be acceptable in reports.

Requests for expedited examination (CIPO Practice Notice link) – There is no fee for requesting expedited examination and no particular form, but it can’t be filed online. An affidavit or statutory declaration is required to setting out the specific circumstances for the request.

Measures to improve timeliness in examination (CIPO Practice Notice link) – “While CIPO has built capacity by hiring more staff, this solution alone is insufficient in the short term to avoid increased wait times. Therefore, implementing additional initiatives are necessary to ensure the issuance of timely and quality rights.”

  • “Since pre-approved goods or services do not require further validation by an examiner, these applications and any amended applications entirely comprised of pre-approved goods or services will be examined more quickly, in some case prior to those that did not use this option.”
  • “Specifically, unless the amendments to the statement of goods or services can be made by way of a telephone amendment, examiners will no longer provide examples of acceptable goods or services in the examiner’s first report.”
  • “Examiners will reduce the number of reports issued and the Office will, where reasonable, refuse trademarks in a more timely manner. To this end, examiners will only be required to maintain a particular submission or argument once.”

According to my review of the data, most of the non-Madrid trademark applications which received a first examiner’s report in April 2021 (the last full month data is available), were filed in September and October 2018 – 30 months ago.

Blake Wiggs’ blog, Canadian Trademark Intelligence has been looking at CIPO’s trademark backlog issue.

Update May 5, 2021: Here is a chart of the months since filing date for first examiner’s reports for 2018 to present: