1. Restrictions on postponed responses to review opinions
The Canadian Intellectual Property Office announced on January 17, 2020 that if a trademark applicant fails to provide an appropriate response to the Office Action (OA) within the 6-month period, there will be restrictions on the extension of the application period.
Before January 17, 2020, the Office will grant trademark applicants an extension of up to 6 months to respond to the OA or state their opinions without providing substantive reasons. However, after the expiration of 12 months from the date of the initial OA issuance, if an application for extension of the time limit is required, the Office will require the applicant to provide evidence for exceptional special circumstances to prove the legitimacy of his inability to respond to the OA within the time limit.
From now on, the Office does not allow applicants to extend the time limit for applications that are issued on or after January 17, 2020, unless the applicant provides evidence on exceptions to prove that they cannot file an OA within the time limit. The legitimacy of an appropriate response. Appropriate responses, including responses to all OA refusal reasons, qualifications, or requests made.
At the expiration of the 6-month period from the date of OA issuance, if the applicant fails to provide an appropriate response, or if the reasons provided for the request for extension of the time limit are not justified, the applicant will be deemed to constitute Section of the Canadian Trademark Act. For the in default in the prosecution of the application referred to in Article 36, the Office will issue a notice of default to the applicant.
Examples that meet the above exceptions:
(1) Recently changed trademark agents: because trademark agents need time to familiarize themselves with documents.
(2) Uncontrollable circumstances of related personnel: such as the occurrence of illness, accident, death, bankruptcy or other unpredictable serious circumstances.
(3) Transfer: The transfer of the application or registered trademark is still in operation, and the transfer will overcome the confusing grounds for rejection.
(4) Opposition: The similar trademark that is cited and is under review is the issue in the pending opposition procedure.
(5) Article 45 of the Trademark Law: The cited registered trademark is still in the fact that the trademark has been used within three years of proof.
(6) Official mark: The applicant is actively coordinating to obtain the consent of the official mark holder.
(7) The division of the protocol application: the applicant requests the division of the protocol application based on the Canadian national application and is currently waiting for the approval notice from the International Bureau of WIPO.
(8) The reply may cause the application to be rejected in accordance with Paragraph 1 (b), (c) or (d) of Article 37 of the Trademark Law: the applicant needs more time to consider how to respond in this case, but is only allowed to extend once.
(9) Collect identifying evidence of the trademark in accordance with Article 32, Item 1 of the Trademark Law: the applicant is still in the process of collecting sufficient evidence to prove that the trademark is identifying at the date of application, but only one extension is allowed.
2. Reply to the notice of Article 44-1 of the Trademark Law
In accordance with Paragraph 1, Article 44-1 of the Trademark Law, the Registry may notify the trademark owner, and within 6 months from the date of notification, provide information on a description of the goods or services designated by the trademark according to the NICE classification of goods or services pursuant to Paragraph 3, Article 30 of the same law.
If the trademark owner fails to submit the description at the expiration of the above 6-month period, a second notice will be issued. If the description is still not provided within 2 months after receiving the second notice, then The trademark registration may be revoked.
Normally, the Office will allow the extension of time only if the trademark owner can provide evidence on the factual reasons for the exception.
The following are examples of possible exceptions. Under the following exceptions, it is deemed justified to extend the 6-month period to provide instructions:
(1) Recently changed trademark agents: because trademark agents need time to familiarize themselves with documents.
(2) Uncontrollable circumstances of related personnel: such as the occurrence of illness, accident, death, bankruptcy or other unpredictable serious circumstances.
(3) Transfer: The transfer of registered trademarks is still in operation.
3. Fees
According to Article 14 of the Enforcement Rules of the Trademark Law, anyone who applies for an extension of time in accordance with Article 47 of the Trademark Law must pay a statutory fee of CAD 125. The above-mentioned fees are only required to be paid if the law or the enforcement rules have a time limit or period. Therefore, the trademark owner shall provide the registrar with the instructions required by Article 44-1(1) of the law within a prescribed time limit. If the period needs to be extended, the fee shall be paid. However, the extension of the time limit for responding to the OA is not required to pay Fees, because the trademark law and its enforcement rules do not specify a time limit.
This fee must be paid at the time of application, regardless of whether the extension of the time limit is approved or not.
Released by TIPO
