Canadian Intellectual Property Office Issues Limits to Extensions of Time in Examination and Responding to Actions

19 Jan 2020

GATINEAU, QC - Canadian Intellectual Property Office (CIPO) issued on January 17, 2020 a new practice notice entitled ‘Extensions of time in Examination and to respond to a section 44.1 of the Trademarks Act notice’ that replaces the practice notice of the same name published on the CIPO website on June 17, 2019.
Effective immediately, the Office will generally not grant an applicant an extension of time to file a response to an examiner's report issued on or after the date of publication of this notice unless the applicant demonstrates exceptional circumstances justifying why it is not yet possible to file a proper response. The Office considers that a proper response consists of a response wherein all objections, requirements or requests raised in the report have been addressed. 
The following are examples of what could amount to an exceptional circumstance that would justify an extension of time:
1.Recent change in trademark agent
There has been a very recent change in appointed trademark agent and the agent requires time to become familiar with the file.
2.Circumstances beyond the control of the person concerned
Examples include illness, accident, death, bankruptcy, or other serious and unforeseen circumstances.
3.Transfer
There is a request pending at the Office to record or register the transfer of an application or registered trademark, and said transfer would overcome a confusion objection.
4.Opposition
The cited co-pending and confusing trademark is the subject of a pending opposition proceeding.
5.Section 45
The cited registered trademark is subject to a pending section 45 proceeding.
6.Official mark
The applicant is in the process of actively negotiating a consent from the holder of an official mark.
7.Division of a Protocol application
The applicant has filed a request for the division, in respect of Canada, of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created.
8.Respond to an objection which could lead to a refusal under paragraphs 37(1)(b), (c) or (d) of the Act
The applicant requires more time to consider the objection and file a proper response. The applicant may request an extension of time for this reason only once in the prosecution of the application.
9.Compile evidence of distinctiveness under subsection 32(1) of the Act
The applicant is in the process of compiling the sufficient evidence required to show that the trademark was distinctive at the filing date of the application. The applicant may request an extension of time for this reason only once in the prosecution of the application.

For more information, please check the following link:
https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04736.html 
 


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