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Amendments to Trademark Laws

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Feb 06, 2020 (Newsletter Issue 1/20)
Canada
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Notice on Extensions of Time to Respond to Office Actions


The Canadian Intellectual Property Office changed its practice regarding extensions of time to respond to office actions.

As of January 17, 2020, an applicant will need to file a proper response or demonstrate exceptional circumstances to obtain an extension of time to file a response within the specified time in the office action.

If, at the expiry of the six month period after the date of the examiner's report, the applicant fails to file a proper response, or if the reasons provided in a request are not considered to justify an extension of time, the applicant will be considered in default in the prosecution of the application.

The following are examples of what could amount to an exceptional circumstance that would justify an extension of time:
- Recent change in trademark agent
- Circumstances beyond the control of the person concerned such as illness, accidents, death, bankruptcy, or other serious and unforeseen circumstances
- Transfer. There is a pending assignment filed at the Office and it would overcome a confusion objection.
- Opposition (the cited mark is the subject of a pending opposition Proceedings)
- Section 45 (summary expungement proceedings are pending against the cited mark)
- Official mark (when the applicant is negotiating a consent from the holder of an official mark)
- Division of a Protocol application
- Respond to a substantive objection that could lead to a refusal. The applicant may request an extension of time for this reason only once in the prosecution of the application
- Compile evidence of distinctiveness under subsection 32(1) of the Act. The applicant may request an extension of time for this reason only once in the prosecution of the application

This rule applies for an office action issued on or after January 17, 2020. For an office action issued prior to January 17, 2020, this practice does not apply, and an initial extension of time remains available without having to provide substantive reasons.


Source: Benoît & Côté, Canada