Menu

Restricting availability of time extensions in trademark cases

Share on facebook
Share on twitter
Share on linkedin

Canadian trademark practitioners and trademark stakeholders of the Canadian Intellectual Property Office (CIPO) will be impacted by a recent policy change in the CIPO related to extensions of time for response to various office requirements.  A new Practice Notice was issued by the CIPO on January 17, 2020 which will have the effect of significantly restricting the availability of extensions of time for responses to various examination reports and requests for information from CIPO to trademark owners.  If you would like to read the Practice Notice in its entirety it can be found at:  http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04736.html

Extension of time to respond to Examiners Report:

Effective immediately, CIPO will no longer grant an applicant an extension of time to file an office action response without demonstrating exceptional circumstances supporting the request.  Failing a timely complete response to an examiner’s report or a request for extension containing demonstrated exceptional circumstances within the typically provided six month deadline, applications will be considered in default.

The practice notice outlines a number of categories of exceptional circumstances considered by the CIPO to be satisfactory examples, including the following:

  • Recent change of trademark agent;
  • Circumstances beyond control (sickness, death, bankruptcy etc.);
  • Pending transfer of ownership which would overcome a confusion objection;
  • Opposition or Section 45 – cited trademark is the subject of a pending opposition or section 45 expungement proceeding;
  • The applicant is in process of actively negotiating a consent from the holder of an official mark;
  • The applicant is in process of division of the international Protocol registration on which an application is based and is waiting on IB confirmation of the divisional;
  • A single extension can be requested to provide more time to file a proper response to an objection in respect of an application which is subject of an indication of a potential refusal; and
  • A single extension can be requested to extend the available time to compile evidence of distinctiveness to respond to a non-distinctiveness objection.

Former practice has been that a first extension of time of six months was typically provided without demonstration of exceptional circumstances, for example in cases where counsel were unable to receive instruction for an extended period of time, or cases where international multi-party negotiations were underway.  Practitioners will need to adjust to the non-availability of such extensions, and it would even appear that best efforts to at least partially respond to a report where a complete response is not possible will not be considered acceptable insofar as the practice notice indicates that a complete response is required to avoid the default of an application.

No fee is payable in respect of a request for an extension of time to respond to an office action.

The new extension practice will only apply to office actions issued after January 17, 2020.

Extension of time to respond to s. 44.1 request:

Canadian trademark holders recently began to receive requests from the CIPO pursuant to Section 44.1 of the Trademarks Act to apply the Nice Classification of goods and services to listings of products and services contained in extant Canadian trademark registrations.  This change in extension of time practice will also apply to the response to these section 44.1 classification requests.

A response to a s. 44.1 request is typically due in six months, failing which a registration will be expunged. The only acceptable grounds for exceptional circumstances listed in the practice notice with respect to this type of case, which could result in the ability to justify a single six month extension of time, are the recent change of the trademark agent of the owner, pending transfer request related to ownership of the trademark, or circumstances beyond the control of the person concerned (sickness, death, bankruptcy etc.).  There is a fee payable for request for an extension of time of this deadline which is currently $125.

These changes will be of particular interest to trademark applicants and owners involved in multijurisdictional portfolio management or cases with complicated competitive matrices, where negotiations with third parties or multiple layers of instructing principals are present in cases extending the time required for instructions or response.

Share on facebook
Share on twitter
Share on linkedin

OUR TEAM:

Cory Furman, Q.C.

Lawyer,
Patent & Trademark Agent

Anna Hengen

Legal Assistant

Lorna Giljam

Business Manager

RECENT UPDATES AND INSIGHTS

Acceleration of COVID-related Trademark Applications
Protecting your IP Assets as a Part of your Exporting Strategy
Branding & IP Protection in Export Transactions
Restricting availability of time extensions in trademark cases
IP Strategy in the Boardroom
Counterfeiting – what is it and what can you do about it?
previous arrow
next arrow
Slider

Copyright Furman IP, 2021.
TERMS OF USE   PRIVACY POLICY

300 – 1914 Hamilton Street 
Regina, Saskatchewan
Canada S4P 3N6

Connect with us:

Thanks for reaching out!

We’ll get back to you as soon as possible to chat about your inquiry!  And in the meantime – check out a couple of our latest updates on the right.

Let's Get in

Touch

Call us

+1 (306) 992-0740

Find our office

300 - 1914 Hamilton Street Regina, Saskatchewan, Canada S4P 3N6

We'd love to hear from you and answer your questions about our firm or Canadian IP law & Strategy - how can we help?


Subscribe to Updates

Join our list to receive occasional email updates on Canadian IP law and strategy.



PS. We hate spam like you do - rest assured we will never sell your information to anyone.

This website uses cookies to enhance your browsing experience.  You agree to this by continuing to use the site.  Click here for more info.