On December 14, 2020, the Canadian Intellectual Property Office (CIPO) issued a Practice Notice allowing trademark applicants to seek expedited examination for COVID-19-related goods and services, namely, pharmaceuticals, medical devices, medical protective equipment, or medical services and research services related to the prevention, diagnosis, treatment, or cure of COVID-19. Requests for expedited examination required support by an affidavit or statutory declaration stating that (1) a court action relating to the goods/services was pending, (2) the applicant was seeking to contest counterfeit goods at the border for the goods/services covered or (3) Health Canada was in the process of or had granted use approval. At the time of issuance, expedited examination was considered a pilot initiative, to continue until August 31, 2021 or until the Registrar deemed appropriate.
More recently, however, on May 3, 2021, the availability of expedited examination was expanded way beyond applications seeking coverage for COVID-19-related goods and services, ostensibly (among other steps) intended to reduce, more generally, delays in examination. Now, an applicant may request expedited examination (again supported by an affidavit or statutory declaration), based on (1) a pending or expected court action relating to its rights, (2) to address threats to IP rights caused by counterfeit goods at the border, (3) to protect the applicant’s rights from being severely disadvantaged in the online marketplace, or (4) to preserve a claim of priority within a certain deadline and following a request by a foreign IP office. Requests may be sought for only one application at a time. There is no official fee for filing the request. If a request is accepted, the CIPO will conduct examination “as soon as possible.” If rejected, the CIPO will provide reasons for denial.
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