Clark Wilson LLP - Canada
On 20 May 2020 the Canadian Intellectual Property Office (CIPO) published a list of amendments to pending trademark applications that can be made over the phone. CIPO’s initiative is intended to efficiently address certain deficiencies found in trademark applications without issuing a formal examiner’s report, thereby improving the trademark application system for all users.
In applicable cases, Trademark Office examiners will call the applicant or their appointed agent in order to obtain a verbal authorisation to amend their trademark application by adding the necessary disclaimer related to the use of a trademarked colour system (eg, Pantone) or an 11-point Maple Leaf (remaining available for use by all Canadians as a key symbol of the country).
Examiners will also call the applicant or its agent to request that they electronically submit a revised application for various amendments, including:
- removing a ‘TM,"MC’ or registration symbol from a mark;
- correcting a typographical error;
- correcting a priority claim not properly linked to an amended goods and services claim;
- amending a statement of goods and services that has been improperly set out (eg, if a semicolon is misplaced);
- correcting a Nice classification; and
- completing a colour claim.
If the call is not answered, the examiner will leave a voice message for the applicant or their agent. Further, if a response is not received by the examiner within 72 hours, they will issue an examiner’s report. It is not clear whether the above calls will be reserved for circumstances where a denoted deficiency is the only problem located by the examiner on an application or whether the examiner might still issue a report for another deficiency despite a timely response to their amendment request.
CIPO’s goal of increasing administrative efficiency is clearly laudable. That said, given the impracticably short 72-hour window for the applicant/agent response, it appears likely that many cases will not be resolved via this avenue and examiner’s reports will be issued in any event – with the net result that the telephone practice actually adds administrative churn to the file in such instances. Further, it is not hard to visualise scenarios where the agent of an applicant will spend more time and energy seeking instructions to respond to a telephone request in an expedited manner than would have been the case if an examiner’s report were issued immediately. That said, there will certainly be situations in which applicants can take advantage of the new practice, which should materially enhance the pace of an application’s prosecution.