Trademark applications are generally examined in order, 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, the Canadian Intellectual Property Office does not currently grant requests to examine trademark applications out of order.
However, in the context of the current COVID-19 pandemic, and with a view to ensuring Canadians have timely access to COVID-19 related products and services, effective the Office will begin accepting requests for expedited examination of trademark applications associated with medical goods or services related to COVID-19.
Form and content of request
The Registrar 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 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;
- An approval for use of the goods or services listed in the application has been submitted to, or has been obtained from, Health Canada under the same name as the trademark.
Examples of Health Canada approval processes include:
- a Medical Device Licence (MDL);
- a Medical Device Establishment Licence (MDEL);
- an authorization under the Interim Order respecting the importation and sale of medical devices for use in relation to COVID-19;
- an investigational testing authorization (ITA);
- an authorization under the Interim Order Respecting Clinical Trials for Medical Devices and Drugs Relating to COVID-19;
- No Object Letter (NOL) for clinical trials;
- Notice of Compliance (NoC);
- an authorization under Interim Order Respecting the Importation, Sale and Advertising of Drugs for Use in Relation to COVID-19.
To be eligible for expedited examination under this procedure, the application must include at least one of the following types of goods or services:
- pharmaceuticals, medical devices (such as diagnostic tests, ventilators), or medical protective equipment (such as sanitary masks for protection against viral infections, disposable gloves for medical purposes) that prevent, diagnose, treat, or cure COVID-19;
- medical services or medical research services for the prevention, diagnosis, treatment, or cure of COVID-19.
How to file a request
Requests must include the name of the applicant and, if known, the trademark 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.
This practice notice is intended to provide guidance on the Canadian Intellectual Property Office practice and interpretation of relevant legislation. However, in the event of any inconsistency between this notice and the applicable legislation, the legislation must be followed. The provisions of this practice notice are general guidelines only, are not binding in any particular case and are subject to change.