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Exceptional circumstances now required for extensions in trademark examination

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On January 17, 2020, the Canadian Intellectual Property Office (“CIPO“) published a new Practice Notice which significantly curtails the availability of extensions of time to respond to Office Actions in trademark examination.

Under the former practice, an applicant was given six months to respond to an Office Action, regardless of the number or complexity of issues raised. This initial six month deadline was extendable for a further six months upon filing a request with the Office – no special circumstances were required to be granted the extension. Any further extensions beyond that (i.e. more than a year from the date of the Office Action), would only be granted if there were exceptional circumstances warranting a further six month extension of time.

Under the new practice, which applies to any Office Actions issued on or after January 17, 2020, the initial deadline for an applicant to file a response to an Office Action will remain six months from the date of the Office Action. However, applicants will no longer automatically be granted a six month extension of the response deadline upon request.  

In order to secure a six month extension of any Office Action issued on or after January 17, 2020, it will be necessary for an applicant to put forward exceptional circumstances to justify the extension. The Practice Notice lists the following as exceptional circumstances:

  • Recent change in trademark agent
  • Circumstances beyond the control of the person concerned
  • A pending request for a transfer of the ownership in the mark
  • Opposition against a cited mark
  • Cancellation proceedings against a cited mark
  • Negotiation with the owner of a cited Official Mark
  • Division of a Madrid Protocol application
  • The application has received a substantive objection on the basis that the mark is not registrable, for example, it is confusing with another mark, it is descriptive or primarily merely a name or surname or is not inherently distinctive 
  • The applicant will be filing evidence of acquired distinctiveness

This is a non-exhaustive list and CIPO will consider other circumstances in which it may be appropriate to grant the extension.

Most notably, this new practice means that extensions of time will generally no longer be available for any technical objections (i.e. goods/services amendments, classification requirements, colour claims, etc.).

For applications that received an Office Action on or before January 16, 2020, the old practice will still apply and applicants will generally be granted one six month extension of time to respond upon request. After this first extension of time, the Office will require that the applicant demonstrate exceptional circumstances in order to be granted a further extension.

The new extension of time practice will require vigilance on the part of applicants and their counsel to ensure that Office Actions are reported and responded to in a timely fashion given the limits on available extensions of time.

By Michael O’Neill, Gowling WLG

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