In an effort to reduce the significant backlog of pending trademark applications in Canada, the Canadian Intellectual Property Office ("CIPO") has implemented a project using AI technology. The aim of the project is to use AI to review the goods and services statements in pending Canadian trademark applications, and to issue notifications to those applicants in cases where the AI has identified issues.
Starting on April 1, 2022, CIPO began issuing letters to inform applicants whether their application:
(a) Has an acceptable goods and services description;
(b) Includes goods and services that have either not been classified or that have been improperly classified; or
(c) Includes goods and services that do not appear in the CIPO Goods and Services Manual or that are not acceptable as they lack sufficient specificity.
It is important to note that the AI technology will not identify which specific goods or services are at issue. Rather, the aim of the automated CIPO letters is to give applicants an opportunity to review their specifications with their trademark agent and rectify any issues prior to examination of the application with a view to reducing and/or eliminating objections once the application is examined.
If applicants choose to revise the goods and services to "pre-approved descriptions" from CIPO 's Goods and Services Manual, this will result in accelerated examination of the application. CIPO has stated that 70 per cent of applications which comprise goods and services taken exclusively from CIPO 's Goods and Services Manual are approved without an Office Action.
While there will be no requirement or deadline to respond to these letters, applicants may wish to consider revisiting the goods and services specifications as a means to expedite the examination of their applications in Canada.
There will be instances where it may not be advisable to amend the application in response to a CIPO AI generated letter, such as in cases where examination of the application is imminent, or where the amendments would not be to "pre-approved descriptions."
To learn more about CIPO 's new AI project and how we can help, you can contact one of the authors or a member of our Intellectual Property Law Group.