More changes to Canadian trademark practice: New limits on extensions of time in examination

3 minute read
05 December 2019

The Canadian Intellectual Property Office (CIPO) has announced that it will soon be changing its practice regarding extensions of time to respond to office actions. The new policy will apply immediately upon the publication of the relevant Practice Notice.  The new practice may be in place in the next 4-6 months.

Currently, applicants are easily able to obtain a first six month extension of time to respond to an office action with the possibility to further extend that deadline for an additional six month term based on "exceptional circumstances."

Under the proposed new policy, while office actions will carry the standard six month term to respond, there will be no automatic right to an extension of time.  Instead, extensions will be available based only on exceptional circumstances that are considered sufficient to justify the grant of delay.

  • The current list of exceptional circumstances listed in the Practice Notice entitled Extensions of time in Examination and to respond to a section 44.1 notice include:
    • Recent change in trademark agent
    • Circumstances beyond the control of the person concerned
    • A pending transfer request
    • Opposition against a cited mark
    • Cancellation proceedings against a cited mark
    • Negotiation with an Official Mark holder
    • Division of a Madrid Protocol application

CIPO will be expanding the list of exceptional circumstances to now include:

  • Where the application has encountered an objection pursuant to Section 37 (1) (b), (c) or (d)  - registrability, entitlement or not inherently distinctive
  • Where the applicant will be filing evidence of acquired distinctiveness

CIPO will be considering other situations that may be appropriate to add to the list of exceptional circumstances. 

The details and examples of the above will be included in the new Practice Notice.

In most circumstances, an applicant should expect to be granted only one six month extension in these exceptional circumstances.  However, Examiners will continue to have discretion, in appropriate circumstances, to grant a further extension. 

We will be closely monitoring deadlines and issuing reminders with a note regarding the new policy.

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