Proposal to restrict extensions of time issued

On September 30 2009 the Canadian Intellectual Property Office (CIPO) opened a consultation period for the review of proposed changes to its practice in granting extensions of time during the examination of trademark applications.
The proposed practice notice brings about a marked departure from CIPO’s previous practice of liberally granting multiple consecutive extensions of time upon requests from applicants. Under the proposed new practice, an applicant will generally be granted just one extension of time (up to a maximum of six months) to file a response to an examiner's report, and only if such request is “justified”. 

If an applicant’s request for a further extension of time is not accompanied by a proper response, and if the justification offered in support of such further request is deemed to be insufficient, a default notice will be issued. There will then be a limited period of time to cure the default failing. If the applicant fails to file a proper response within the time specified in the default notice, the application will be deemed abandoned.
At this time, there is no guidance from CIPO as to what reasons for requesting a further extension of time might be “justified”. The proposed practice notice cryptically mentions that CIPO will require “significant substantive reason(s)”, which are expected to be “set out in detail”.
Canadian trademark practitioners are hoping that the feedback submissions received by CIPO during the consultation period (which expired on October 30 2009) will prompt the release of more detailed guidelines as to the "justified" reasons for further extensions.
CIPO’s new approach to streamlining the examination of trademark applications will certainly require a more disciplined management of the examination process by applicants. It may also restrict the strategic options available to some applicants with 'problematic' trademarks.

Moreover, the new approach may force Canadian trademark agents to take positions based on incomplete instructions to prevent abandonment of applications. It will certainly prevent some applicants from maintaining questionable applications for lengthy periods of time. It might also lead to an increase in appeals from decisions of the registrar, which are currently quite rare. Whether for better or worse, this new approach will significantly alter the average time for which applications remain pending.
Gordon Zimmerman, Daniel Brinza and Chris Watson, Borden Ladner Gervais LLP, Toronto

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