On December 14, 2020, the Canadian Intellectual Property Office
(CIPO) issued a Practice Notice allowing trademark applicants to
seek expedited examination for COVID-19-related goods and services,
namely, pharmaceuticals, medical devices, medical protective
equipment, or medical services and research services related to the
prevention, diagnosis, treatment, or cure of COVID-19.
Requests for expedited examination required support by an affidavit
or statutory declaration stating that (1) a court action relating
to the goods/services was pending, (2) the applicant was seeking to
contest counterfeit goods at the border for the goods/services
covered or (3) Health Canada was in the process of or had granted
use approval. At the time of issuance, expedited examination
was considered a pilot initiative, to continue until August 31,
2021 or until the Registrar deemed appropriate.
More recently, however, on May 3, 2021, the availability of
expedited examination was expanded way beyond applications seeking
coverage for COVID-19-related goods and services, ostensibly (among
other steps) intended to reduce, more generally, delays in
examination. Now, an applicant may request expedited
examination (again supported by an affidavit or statutory
declaration), based on (1) a pending or expected
court action relating to its rights, (2) to address threats to IP
rights caused by counterfeit goods at the border, (3) to protect
the applicant's rights from being severely disadvantaged in the
online marketplace, or (4) to preserve a claim of priority within a
certain deadline and following a request by a foreign IP
office. Requests may be sought for only one application at a
time. There is no official fee for filing the request.
If a request is accepted, the CIPO will conduct examination
"as soon as possible." If rejected, the CIPO will provide
reasons for denial.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
