Requests for expedited examination of trademark applications: rights at risk and impact of COVID-19

This exceptional delay finally provokes a timid response from the administrative authorities to protect the rights of trademark owners awaiting the grant of their rights. In certain circumstances, it is now possible to file a request for expedited examination of a trademark application.

Also, to participate in the national effort against the COVID-19 pandemic, CIPO has opened the door to requests for expedited examination of trademark applications associated with services or products related to COVID-19.

The situations and criteria to be met are summarized below:

A. Your rights are at risk due to the actions of third parties

Since May 3, 2021, it is now possible to file a request for expedited examination when you face at least one of the following situations:

1. A court action is expected or underway in Canada with respect to your trademark in association with the goods or services listed in the application;
2. You are in the process of combating counterfeit products at the Canadian border with respect to your trademark in association with the goods or services listed in the application;
3. You must obtain registration of your trademark to protect your intellectual property rights from being severely disadvantaged on online marketplaces; or
4. You must obtain registration of your trademark to preserve your claim to priority within a defined deadline and following a request by a foreign intellectual property office. Note that in such cases the request must be attached to the Affidavit or Statutory Declaration.

This request must be accompanied by an Affidavit or Statutory Declaration signed by a person having knowledge of the facts and stating the circumstances and reasons for the request.

While the circumstances described in points 1, 2 and 4 are fairly clear, the circumstances described in point 3 are open to different situations. If you see facts that cause you to fear a loss of rights in the protection of your trademark(s) in the context of online commerce, do not hesitate to contact one of our trademark team members to discuss your situation.

B. Your goods and services are medical in nature and related to COVID-19

Since a few months now, it is possible to request an expedited examination of a trademark application in relation to goods and services of a medical nature in connection with COVID-19.

The request must be accompanied by an Affidavit or Statutory Declaration signed by a person having knowledge of the facts. To be eligible, you must be in one of the following situations:

1.   There are legal proceedings pending in Canada in respect of your trademark in association with the goods or services listed in your trademark application;

2.   You are fighting counterfeit goods at the Canadian border with respect to your trademark in association with the goods or services listed in your trademark application;

3.   You have applied to Health Canada for authorization or have already been authorized by Health Canada to use the goods or services listed in your trademark application under the same name as the trademark. CIPO cites the following examples:

• 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 the 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 trademark application must include at least one of the following types of products 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.

Our team can assist you with all your trademarks needs in Canada and foreign countries. Do not hesitate to contact us.