Canadian Lawyer

March 2022

The most widely read magazine for Canadian lawyers

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Page 32 of 51 31 significant savings if trademark protection is sought in several countries. "It's opened up protection to small and medium-sized enterprises that historically would not have had access to, just by virtue of the considerable cost of undertaking a national filing program." Stephen Beney at Bereskin & Parr LLP agrees: "On the trademark side, we are seeing more Madrid designations in Canada as more companies start to take advantage of Canada joining the Madrid Protocol. Although this came into force before the pandemic, we have seen more companies take advantage of [the] Madrid [agree- ment], particularly in the past year." Lovrics notes that since a Madrid Protocol application is anchored to the Canadian filing, the current backlog at CIPO can create "material risk to those using the Madrid Protocol because it's pushing out the timeline." She does acknowledge that the CIPO have made concerted efforts to improve their turn- around time by hiring more staff, beyond any attrition of current employees. With the growing importance of e-commerce and the pivot from brick-and- mortar to online shopping, there's greater risk of copyright infringement, counterfeit goods and other IP violations. Even with the Madrid Protocol and efforts to deal with the backlog at CIPO, gaps remain in clients' ability to defend their rights. However, some "self- help" options are emerging, such as Amazon's Brand Registry, which can proactively remove suspected IP violations or inaccurate content and allow brands to report any suspected infringement. Lovrics points out that this system has obvious merits but trying to keep applications filed in 2019. The average wait time for first examination from filing is on the order of 26–36 months." However, CIPO appears to have a plan to reduce the backlog of Canadian trademark applications awaiting first examination. Another notable development is CIPO's announcement of a plan to examine trade- mark applications based on their categories. Applications requesting expedited exami- nation are first priority. Then, Canadian trademark applications filed according to the Madrid Protocol are examined in the order in which they were filed in Canada. For all other Canadian trademark applica- tions, CIPO gives priority to applications covering goods and services from a pre- approved "picklist." Canadian trademark applications using the picklist are being examined at a rate of approximately three times the rate of appli- cations which don't describe the goods and services using exclusively the picklist. The lowest priority goes to regular, non-Madrid applications filed which don't use the pick- list to describe the goods and services. What the Madrid protocol can do Canada joined the Madrid Protocol in 2019, which enables trademark owners to file a single application for international registration with the World Intellectual Property Organization. Lovrics at Marks & Clerk says that this allows Canadian businesses to take advantage of an inter- national filing system that can provide AVERAGE TURNAROUND TIMES FOR GRANTING A PATENT 50 40 30 20 10 0 2013-2014 43 40 39 34 32 31 37 2015-2016 2017-2018 2014-2015 months 2016-2017 2018-2019 2019-2020 Source: Canadian Intellectual Property Office

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