New Practice Notice for Extensions of Time in Examination
The Canadian Intellectual Property Office (the "CIPO") has published a Practice Notice effective March 11, 2010 which outlines new policies and practices concerning extensions of time during the examination of trademark and industrial design applications.
Specifically, the Trademarks Office and Industrial Design Office will provide Applicants with one (1) extension of time up to a maximum of six (6) months to file a complete response to an Examiner's Report. If a proper response is not filed by the extended deadline the application will go into default (thereby imposing a final, non-extendable deadline).
If, however, an Applicant requires additional time to prepare and file a response, an additional extension will be granted if "exceptional circumstances" are provided to the Examiner which justifies the need for further time. The CIPO has provided the following examples of "exceptional circumstances" which may justify a further extension of time:
- a recent change in Trade-mark Agent;
- circumstances beyond the control of the person concerned (i.e. illness, accident, death, bankruptcy or other unforeseen or serious circumstances);
- a very recent assignment of the trade-mark;
- where a certified copy of a foreign registration certificate has been requested by the Examiner but not yet filed because the foreign application has not registered;
- where the applicant is negotiating for a consent from the holder of an official mark; or
- if the cited co-pending and confusing mark may be going abandoned; is subject of opposition proceedings initiated by the Applicant; or where a cited registration is the subject of a section 45 proceeding initiated by the Applicant.
Notably, the above-mentioned list is not exhaustive and does provide a measure of flexibility for examiners to exercise some discretion in granting additional time. Nevertheless, the Practice Notice vaguely references a "recent" change or assignment of the mark (1 and 2 above) while seeming to suggest that the Applicant must also be the party that initiates opposition or a section 45 proceeding against a cited mark (this latter requirement is perplexing since it is the outcome of that proceeding which is relevant to the prosecution rather than the parties to the opposition/section 45 proceeding).
