The Canadian Intellectual Property Office (CIPO) maintains stringent requirements for trademark applications, with approximately 75% of submissions triggering an examiner’s report. Notably, nearly 65% of these reports cite objections rooted in insufficient description. In response, brand owners and foreign representatives frequently engage Canadian trademark agents to review descriptions before filing, aiming to preempt specificity issues. Nevertheless, CIPO’s practices evolve, and the discretion of Canadian examiners determines the decision to specify a term. Should a specificity objection arise, applicants can leverage resources such as the Goods and Services Manual.
While CIPO typically directs all future correspondences to the applicant, some communications may be sent to the World Intellectual Property Organization (WIPO). To ensure comprehensive communication and deadline awareness for foreign representatives, appointing a Canadian trademark agent becomes pivotal in staying informed about developments related to the Canadian designation.
The Madrid Protocol mandates CIPO to examine Canadian designations within 18 months. However, the examination process is slow, extending up to a year. If expedited examination is crucial, applicants can submit a request supported by an affidavit or statutory declaration demonstrating the fulfillment of at least one pre-determined criterion. CIPO commits to examining applications within two weeks after a successful request is filed.
Since 2019, Canadian examiners have been empowered to raise objections to trademark registration on grounds of lack of inherent distinctiveness. This encompasses instances involving well-known geographic locations, design marks, colors, laudatory terms, surnames, combinations of unregistrable elements, and non-traditional trademarks. To register a trademark, applicants must furnish evidence of acquired distinctiveness, a practice likely subject to reversal upon appeal assessment.
Overcoming a provisional refusal grounded in a distinctiveness objection involves two options: filing written submissions arguing for withdrawal of the objection or presenting affidavit evidence that establishes the mark’s distinctiveness as of the Canadian filing date. This evidence must demonstrate exposure to the target market, association with specific goods or services, and distinctiveness across Canada. Seeking guidance from a Canadian trademark agent is advisable for brand owners navigating potential objection challenges.
To enhance the efficacy of responses to provisional refusals from CIPO, brand owners should consider filing comprehensive arguments for two primary reasons: to expedite examination timelines and to more effectively overcome substantive objections with an initial response. This proactive approach mitigates the risk of refusal stemming from the examiner’s initial reluctance.
Read the full article here https://www.lexology.com/library/detail.aspx?g=baa67b81-68d7-4c31-8f14-0385f6ac634a
Learn more about the webinar here https://insights.smartbiggar.ca/canadian-tips-under-the-madrid-protocol
