As the Paris Olympics recently came to a close, we reflected on the many incredible athletic performances, the touching stories of personal triumph, defeat and resilience, and the heartwarming camaraderie shown amongst nations' athletes. We now patiently wait four long years until the next summer Olympics to be hosted by Los Angeles in July of 2028.
Speaking of patiently waiting for four years, this is the rather remarkable current delay to examination of trademark applications filed directly in the Canadian Intellectual Property Office (CIPO). But good news is on the horizon - CIPO has started to reduce the backlog and examination times are expected to drop significantly over the coming year. CIPO has hired 160 new trademark examiners and training of the new examiners is well underway. CIPO expects the time from filing to first examination of a directly filed trademark application to drop from the current 47 months to 24 months by March 2025.
Madrid protocol applications are examined on a different timeline. Applicants of international registrations designating Canada can expect to receive the results of examination about 17 months from the date of the WIPO notification of designation.
Canada does have two mechanisms for fast-tracking applications, namely:
- For directly filed applications that are filed or amended to use only goods and services from the pre-approved list in CIPO's Goods and Services Manual, the current delay to examination is reduced to 16 months.
- For either direct applications or Madrid protocol applications,
it may be possible to request expedited examination if the
applicant can establish by affidavit evidence that one or more of
the following criteria are met:
- a court action is expected or underway in Canada with respect to the applicant's trademark in association with the goods or services listed in the application;
- 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 goods or services listed in the application;
- the applicant requires registration of its trademark in order to protect its intellectual property rights from being severely disadvantaged on online marketplaces; or
- the applicant requires registration of its trademark in order to preserve its claim to priority within a defined deadline and following a request by a foreign intellectual property office.
Our experienced team of trademark professionals routinely evaluate strategies and explore options to accelerate examination of our clients' applications in the Canadian Intellectual Property Office. We're optimistic that once the new team of trademark examiners is up to speed, examination times will fall and our clients' trademarks will be securely registered long before the opening ceremonies of the Los Angeles Olympics.
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