Expedited examination now available for COVID-19 related trademarks

The Canadian Intellectual Property Office (CIPO) published a practice notice entitled “Requests for expedited examination” (Practice Notice) on December 14, stating that it will accept requests for expedited examination of trademark applications associated with COVID-19 related medical goods and services. This pilot initiative will be effective from December 14, 2020 to August 31, 2021 (or until the Registrar of Trademarks deems appropriate).

What you need to know

• The Registrar generally examines trademark applications in the order of their filing date. However, in the context of the COVID-19 pandemic, CIPO will now accept requests to examine certain COVID-19 related applications out of sequence to ensure Canadians have timely access to important medical products and services.
• If the request for expedited examination is accepted, the trademark application will be examined as soon as possible, allowing applicants to overcome significant time delays in the trademark registration process (it is currently not uncommon for a trademark application to take 24 months to be examined).
• A trademark application must include at least one of the following types of goods or services to be eligible for expedited examination:
• pharmaceuticals, medical devices¹or medical protective equipment² that prevents, diagnoses, treats or cures COVID-19; and
• medical services or medical research services for the prevention, diagnosis, treatment or cure of COVID-19.
• There is no fee for submitting a request for expedited examination.
• A request for expedited examination must be in the form of an affidavit or statutory declaration.
• CIPO has allowed for expedited examination of patent applications under various circumstances for many years³, but the Practice Notice marks the first time in more than a decade that expedited examination has been available for trademark applications in Canada.

Submitting a request

Applicants must submit a request in the form of an affidavit or statutory declaration, which sets out the specific circumstances and reasons for requesting an expedited examination. A separate request for expedited examination must be submitted for each trademark application. The submitted affidavit or statutory declaration must also show how one or more of the following criteria are met.

1. A court action is underway in Canada for the proposed trademark.
2. The applicant is in the process of combating counterfeit products at the Canadian border with respect to the proposed trademark.
3. Health Canada is currently reviewing or has approved use of the goods or services listed in the application under the same name as the trademark⁴.

Additional comments

The Practice Notice does not explicitly address whether the goods or services covered by the application must specifically reference COVID-19 in the description. Since the Registrar will make its decision based on the affidavit or statutory declaration and there is no fee, it may be worth submitting a request for expedited examination even where an application is for broader goods or services, provided that the goods or services are used for COVID-19. It is possible that trademark applications which do not explicitly refer to COVID-19 may still be eligible for expedited examination, provided that the accompanying request is sufficiently persuasive.

Applicants granted expedited examination might lose the privilege if they take steps to extend prosecution (such as requesting an extension of time or failing to respond to an office action).

_________________________

¹ Such as diagnostic tests or ventilators.

² Such as sanitary masks for protection against viral infections or disposable gloves for medical purposes.

³ For example, expedited examination can be requested if the regular patent approval process time is likely to prejudice the applicant (such as if a potential infringer is on the market). Advanced examinations are also available for green technologies, under the Patent Prosecution Highway, and now, for applications by small entities relating to COVID-19. See: https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr02462.html.

⁴ Examples of Health Canada approval processes include: a Medical Device Licence (MDL); a Medical Device Establishment Licence (MDEL); an authorization under the Interim Order respecting the importation and sale of medical devices for use in relation to COVID-19; an investigational testing authorization (ITA); an authorization under the Interim Order Respecting Clinical Trials for Medical Devices and Drugs Relating to COVID-19; No Object Letter (NOL) for clinical trials; Notice of Compliance (NoC); an authorization under Interim Order Respecting the Importation, Sale and Advertising of Drugs for Use in Relation to COVID-19.

To discuss these issues, please contact the author(s).

This publication is a general discussion of certain legal and related developments and should not be relied upon as legal advice. If you require legal advice, we would be pleased to discuss the issues in this publication with you, in the context of your particular circumstances.

For permission to republish this or any other publication, contact Janelle Weed.

© 2024 by Torys LLP.

All rights reserved.