In an effort to reduce the significant backlog in trademark examination that the Canadian Intellectual Property Office (CIPO) is facing, CIPO has introduced a "pre-examination" step for pending applications. This "pre-examination" involves an automated analysis of the goods and services claimed in the application to determine whether these consist of "pre-approved" terms found in the Goods & Services Manual.

There are certainly advantages to selecting pre-approved terms when filing new trademark applications. First, the risk of an objection being raised during examination is eliminated. CIPO is known for requiring very specific descriptions of goods and services; therefore, it is common to receive an objection (and sometimes multiple objections!) on the basis that the descriptions are too vague or broad, or that they are not in ordinary commercial terms. By selecting pre-approved terms, this risk is largely eliminated.

Another benefit of using pre-approved terms is that applications that incorporate only pre-approved terms qualify for fast-tracked examination. This will shave about 14 months from the current 39+ month wait.

However, there may be drawbacks to consider as well. Strategically, it may make sense to keep the description as broad as possible for as long as possible, particularly for a product line that is in the process of being developed. Given that examination is taking over three years in Canada, this buys the applicant considerable time to further refine its product offering, while not unduly limiting the scope of the trademark application. 

For example, a manufacturer of "dietary and nutritional supplements" may opt to use this broader description at the time of filing, even though it will trigger an objection. CIPO retired this term in 2021 on the basis that it was not sufficiently specific. Rather, CIPO now requires that supplements be further specified by naming the disease or the condition to be treated, or by indicating the specific type of supplement. Having 3+ years to decide which type of supplement to claim may not be such a bad thing. 

By contrast, if the applicant had claimed "calcium supplements" at the time of filing but then expanded its product offering to include "collagen dietary supplements" and "chorella dietary supplements" by the time of examination, these later descriptions would fall outside the scope of the application. 

To learn more, please contact your Gowling WLG professional.

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