Examination of Trademark Applications
It is taking approximately 50 months for CIPO to examine a trademark application. This is a national embarrassment which just does not seem to be addressed. The steps followed under the Trademarks Act concerning an application are set out below.
Once a duly completed application and the prescribed fee is received by the Registrar, a filing date is given to the application. A search of the register is then done to identify similar or confusing trademarks. The application and search results are passed to an examiner. The application is examined and must be refused if:
a)The application does not describe the goods and services in ordinary commercial terms, define the trademark applied for or comply with other matters relating to form and content of application and the trademark.
b)The trademark is not registrable.
c)The applicant is not the person entitled to registration of the trademark because it is confusing with another trademark for which an application is pending.
The Registrar must not refuse an application without first notifying the applicant of the objections and the reasons for such objections and giving the applicant adequate opportunity to answer the objections. Examiner’s reports are issued which satisfy these criteria.
Where the Registrar, is in doubt whether the trademark claimed is registrable because of potential confusion with a registered mark, the application may be approved for advertisement. However, in such cases the Registrar must, by registered letter, notify the owner of the registered trademark in issue of the advertisement of the application.
In addition, an examiner is entitled to consider the distinctiveness of the applied for trademark and to issue an examiner’s report refusing the application on this ground. An applicant must furnish the Registrar with any evidence that the Registrar may require establishing that the trademark is distinctive at the filing date of the application if any of the following apply:
a)The applicant claims that their trademark is registrable under subsection 12(3).
b)The Registrar’s preliminary view is that the trademark is not inherently distinctive.
c)The trademark consists exclusively of a single colour or of a combination of colours without delineated contours.
d)The trademark consists exclusively or primarily of one or more of the following signs:
the three-dimensional shape of any of the goods specified in the application, or of an integral part or the packaging of any of those goods,
a mode of packaging goods,
any other prescribed sign.
The Registrar must, having regard to the evidence adduced, restrict the registration to the goods or services in association with which, and to the defined territorial area in Canada in which, the trademark is shown to be distinctive.
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These comments are general in nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.