Trademark Practice Committee Agenda
Record of Discussion


  • Mesmin Pierre, Canadian Intellectual Property Office (CIPO)
  • Marijo Coates, Intellectual Property Institute of Canada (IPIC)

1. Opening Remarks

The Co-Chairs Mesmin Pierre and Marijo Coates welcomed the committee members and started the meeting.

2. Recovery Plan Update

Mesmin Pierre provided a high-level update on the CIPO Trademark Recovery Plan.

In May 2021, CIPO introduced the Recovery Plan to improve timeliness in examination. New measures have been implemented since and additional ones will be adopted in the near future.

Since implementing expedited examination for Canada's response to COVID 19, CIPO has received 41 requests of which 24 were accepted. Turn around time is of five (5) business days. This measure is still in place and CIPO continues to receive requests.

CIPO has received approximately 500 requests for expedited examination for urgent actions. Sixty-nine percent (69%) of these requests have been accepted. CIPO's turn around time for these requests is ten (10) business days.

CIPO has hired over 50 new examiners since January 2021. A new cohort of trademark examiners will be hired in October 2022.

CIPO is exploring the introduction of technologies such as artificial intelligence and machine learning to improve quality and timeliness.

CIPO has expanded the Good and Services Manual by 80%, which now has more than 110,000 terms in both official languages.

CIPO is improving its e-services with a first release done in January 2022. Development is currently in progress for electronic correspondence.

Several measures under the Recovery Plan will be permanent as CIPO makes progress at modernizing. The aim is to reduce the turnaround time to issue intellectual property rights and continue to improve quality.

3. New Pre-assessment Process

The Director of Examination presented an overview of the Goods and Services Pre-Assessment Process.

The Office performs a triage of applications. The files are distributed by a ratio of 75/25 for applications using the pre-approved list of goods and services versus the applications that do not use the pre-approved list of goods and services.

Regarding a question from the Committee: CIPO confirmed that examiners will have an information session to ensure consistencies.

Regarding a question from the Committee: CIPO confirmed that once a request is amended, it goes back in the queue by filing date and not at the end of the line.

Regarding the Pre-assessment of applications: The Deputy Director of Policy and Legislation provided a high-level update on volumes.

Regarding a question from the Committee: CIPO provided clarifications on retired terms. The Office confirmed that it will honour a retired term if it was acceptable at the filing date.

Action item: CIPO will send to the Co-Chair (for members) a copy of the PowerPoint slide on the Goods and Services Pre-Assessment Process.

4. Processing Time

CIPO provided an overview of processing time data

Action item: Following the meeting CIPO will circulate the document containing the latest data in both official languages

5. Procedures for Reviewing Applications Incorrectly Advertised

Regarding a question from the Committee: CIPO provided a response about applications incorrectly advertised by presenting the legislative authority and process which includes quality control.

6. Misdirected Mail

Regarding a question from the Committee: A committee member raised an issue regarding the reception of mail addressed to other firms.

CIPO will look into this issue and ask that committee members contact the Office CIPO right away when it occurs. It is CIPO's responsibility to take the necessary steps for its mail to be delivered to clients and stakeholders. The Office is working on launching e-Correspondence in the fall.

7. Follow-up Merger Fee Issue in e-Services

Regarding a question from the Committee: CIPO provided guidance when requesting that a change of name or a transfer resulting from a merger be recorded or registered.

Action : CIPO to look into changing the wording in e-services to help clarify the two possible actions when submitting a merger document.

8. CIPO Handling of Official Marks

Regarding a question from the Committee: A committee member requested clarifications with respect to CIPO's handling of official marks when the public authority merges with an entity that might or might not be a public authority, or transfers assets to another entity that might or might not be a public authority.

CIPO confirmed that the legislation does not provide for any changes in ownership of official marks.

9. CIPO Online System

A committee member had a concern regarding regular outages of the CIPO online system. the Director of Operational Services provided a high level debrief on past maintenance and confirmed that outages are announced online.

10. Webinar on Paragraph 12(1)(a)

CIPO is planning to hold a Webinar on paragraph 12 (1)(a) in the fall of 2022

11. Marking Symbols

CIPO requested committee feedback on abolishing one of the Office's current practices with respect to marking symbols.

When receiving a trademark, application for which the visual representation includes "TM","MC" or another registration or marking symbol such as ®, the Office will request that an amended application be sent whereby the reference or symbol is removed before the application can proceed to advertisement for the purpose of opposition.

Action : Committee members to provide their feedback at the next meeting or by email.

12. Questions

No additional questions from CIPO or the IPIC members.

13. Conclusion

The Co-Chairs agreed to hold the next meeting in September of 2022.