Canadian Lawyer

November 2022

The most widely read magazine for Canadian lawyers

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Page 23 of 51

22 A confluence of factors has made the Canadian Intellectual Property Office's Trademarks Branch one of the world's slowest trademarks processors, lawyers say The perfect storm A SIGNIFICANT overhaul of the Trademarks Act, which Canada implemented less than a year before the pandemic hit, has led to a massive backlog in trademark examinations. "I believe it's the slowest trademarks office in the world, by far," says Philip Lapin, a lawyer, patent and trademark agent, and partner at Smart & Biggar LLP. At the time of writing, the delay in trade- mark examinations was 43 months for applications not using pre-approved terms from the Canadian Intellectual Property Office's (CIPO's) Goods and Services Manual, 21 months for applications using the pre-approved list, and 16 months for interna- tional applications. Historically, the time between filing an application and having the application exam- ined was between six months and a year, says Gary Daniel, counsel at Deeth Williams Wall, whose intellectual property law practice includes trademarks and copyright. "Still not LEGAL REPORT INTELLECTUAL PROPERTY "I believe it's the slowest trademarks office in the world, by far" Philip Lapin, Smart & Biggar LLP EXAMINATION DELAYS Applications using the pre-approved list: 21 months great. But, from a business cycle point of view, that was enough." The backlog is partly due to an upsurge in trademark applications. The 68,277 trademark applications CIPO received in 2019 represented an eight-percent increase from 2018 and a 51-percent increase from 2010, says Justin Simard, a spokes- person for Innovation, Science and Economic Development Canada (ISED). CIPO is a special operating agency within ISED. He says the number of trademark applica- tions has continued to rise, with 76,168 filed in fiscal year 2020/21 and 79,808 in 2021/22. CIPO has hired 102 new trademark exam- iners to deal with the influx since 2020. Amendments to the Trademarks Act came into force on June 17, 2019, and resulted in changes to the trademark examination process. The amendments included the acces- sion to three international intellectual prop- erty treaties. Under the Madrid Protocol, CIPO now accepts foreign filings from the International Bureau of the World Intellectual Property Association. And the Nice Agreement requires trademark applicants to classify all goods and services according to an international classification system. Signing on to the Madrid Protocol meant anyone in the world who wanted to register their mark could do so in Canada. This led to a flood of applications hitting CIPO in a short period, says Meghan Dillon, a partner, lawyer, and registered trademark agent at Bereskin & Parr LLP. "Everybody knew that when Canada joined the Madrid Protocol, that would increase the number of applications, but nobody anticipated how popular Canada would be as a place to protect trademarks," says Lapin. "Last year, for example, Canada Applications not using pre-approved terms from CIPO's Good and Services Manual: 43 months International applications: 16 months

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