Update to Trademark Practice in Canada

By Kimberly Dunn, January 21st, 2020

On January 17, 2020, the Canadian Trademarks Office issued amendments to several Trademark practices. The amendments affect the following:

• Extensions of time in Examination: The Trademarks Office will no longer grant extensions of time unless the Applicant demonstrates exceptional circumstances that would justify the extension.

• Divisional Applications: The Trademarks Office has not yet set up a dedicated e-service for filing divisional applications. As such, the Office has clarified that to file a divisional, an Applicant may either: (1) file an amended application outlining the goods/services to be included in the divisional application; or (2) file the divisional by way of a paper request.

• Transitional Provisions regarding Nice Classification: The Guide to Transitional Provisions has been amended to reflect that notices under44.1(1) of the Trademarks Act will generally only be sent after the renewal of a registration for which the goods/services have not been properly grouped according to the classes of the Nice Classification system.

• Renewals: The Trademarks Office has provided clarification on the procedure for classifying the goods or services according to the classes of the Nice Classification system when renewing a trademark registration.

• Temporary Appointment of Trademark Agent or Associate Trademark Agent: Trademark owners will now have the ability to appoint a temporary Canadian Trademark Agent for the purposes of grouping the goods or services according to the Nice Classification system.

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