Canada: A Trademark Office in Transition

Kluwer Trademark Blog
September 10, 2020

Please refer to this post as: , ‘Canada: A Trademark Office in Transition’, Kluwer Trademark Blog, September 10 2020, http://trademarkblog.kluweriplaw.com/2020/09/10/canada-a-trademark-office-in-transition/


Many trademark functions of the Canadian Intellectual Property Office (‘CIPO’) have been seriously delayed largely as a result of the pandemic. As practitioners became adjusted to the new reality, so too did CIPO, who has worked diligently to overcome administrative problems caused by the pandemic.  That said, the pandemic and issues relating to Madrid adherence have resulted in a huge backlog of work and likely it will take well into 2021 if not longer for CIPO to recover fully.

External deadlines were extended several times until August 31, 2020.  Although the extensions are welcome, this has resulted in significant delays in relation to issuance of registrations, opposition and cancellation proceedings as well as recordals of agent of record and changes in ownership.  The Office recently has expanded the filing of electronic correspondence, a welcome change.

Unfortunately, delay of reporting initial examination remains a notorious problem and is frustrating for applicants and practitioners alike.  The first examination now takes about twenty-four months from the filing date, worse than delays in almost every other jurisdiction.  It is hoped that CIPO will address this serious deficiency as an urgent priority.

Applicants of international applications designating Canada receive courtesy letters from CIPO requesting local Canadian counsel to be appointed as agent of record.   After a Canadian serial number has been designated, recordal of a local agent can be filed, for which there is no fee.

As we prepare for new challenges with respect to the lingering effects of the pandemic, we are hopeful that operations will steadily improve with respect to the CIPO’S trademark functions.