In 2013, when applications were typically being examined within 6 months of filing, the mechanism to request expedited examination for trademark applications was removed by the Trademarks Office. Currently, examination of trademark applications takes about 2 years (and often longer) and the applications are examined in the order in which they are received by the Trademarks Office. On December 14, 2020, the Trademarks Office brought back expedited examination for the limited scope of trademark applications associated with medical goods or services related to COVID-19. This follows the Canadian Patent Office allowing expedited examination for patent applications related to COVID-19 in July 2020 and the US Patent and Trademark Office introducing a prioritized examination process in June 2020 for COVID-19 related applications.
Under Canada’s new expedited examination procedure, a request for expedited examination may be made (at no charge) for an application that includes 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.
Further, the Trademarks Office will only accept requests for expedited examination if at least one enumerated criteria is met and set out in an affidavit or statutory declaration. The criteria include: the existence of a Canadian court action with respect to the subject trademark in association with its goods and services; the applicant is combating counterfeit products at the Canadian border with respect to the subject trademark in association with its goods and services; or an approval for the 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 as a part of an approval process. The Practice Notice lists examples of acceptable approval processes, such as a Medical Device Licence of a Notice of Compliance.
Although there is no fee associated with a request for expedited examination, such requests must be submitted by mail or fax to the Deputy Director of the Trademarks Office’s Examination Division, and cannot be submitted using the online trademark e-filing system.
If the request for expedited examination is accepted, the Office will examine the application as soon as possible. If the request for expedited examination is not accepted, the Office will send written correspondence to the applicant explaining why the request was denied.
This article is provided for informational purposes only and is not legal advice. For further information or assistance in filing a trademark application or a request for expedited examination, please contact us by phone (416) 847-0054 or by email at mail@methodlaw.ca.