Trademark applications are generally examined according to the order in which they are received by the Registrar of Trademarks. There are no specific provisions in the Trademarks Act (the Act) or Trademarks Regulations (the Regulations) concerning expediting the examination of an application. Examining an application out of sequence creates a favored position at the expense of other applicants. As such, apart from the specific and temporary practice in view of the COVID pandemic, the Office of the Registrar of Trademarks (the Office) does not currently grant requests to examine trademark applications out of order.
However, in the context of the current wait times at the examination stage, effective immediately the Office will begin accepting requests for expedited examination of trademark applications.
Requirements to request expedited examination
The Office will accept requests for expedited examination in the form of an affidavit or statutory declaration, by a person having knowledge of the facts, setting out the specific circumstances and reasons for the request. The affidavit or statutory declaration must clearly set out how one or more of the following criteria are met:
- A court action is expected or underway in Canada with respect to the applicant's trademark in association with the goods or services listed in the application;
- The applicant is in the process of combating counterfeit products at the Canadian border with respect to the applicant's trademark in association with the goods or services listed in the application;
- The applicant requires registration of its trademark in order to protect its intellectual property rights from being severely disadvantaged on online marketplaces; or
- The applicant requires registration of its trademark in order to preserve its claim to priority within a defined deadline and following a request by a foreign intellectual property office. Note that in such cases the request will need to be attached to the affidavit or statutory declaration.
How to file a request
Requests must include the name of the applicant and, if known, the application number (for further information, please refer to the practice notice "Identifying an application"). In compliance with subsection 4(1) of the Regulations, a request for expedited examination must not relate to more than one application for the registration of a trademark. There is no fee associated with a request for expedited examination. Requests must be submitted by mail or fax using the contact information outlined below.
Request for expedited examination
c/o Deputy Director, Examination Division
Canadian Intellectual Property Office
50 Victoria Street
Gatineau, Quebec K1A 0C9
After a request is submitted
If the request for expedited examination is accepted, the Office will examine the application as soon as possible. Where a trademark application receives expedited examination, it could lose this advantage if the applicant requests an extension of time or misses any deadline.
If the request for expedited examination is not accepted, the Office will send written correspondence to the applicant explaining why the request was denied.
Please note that all Canadian trademark applications are examined in accordance with the Act and Regulations with guidance from the Trademarks Examination Manual.