Extension Applications

This post looks at extension applications, which seek to extend the goods / services coverage of an existing trademark registration pursuant to Section 41(2) of the Trademarks Act (R.S.C., 1985, c. T-13).

You can’t investigate extension applications via CIPO’s online trademark database because they are not exposed for public search purposes (a search of the online database may reveal one or more extension applications, but you can’t search such applications directly).  In order to investigate extension applications one must work with CIPO’s trademark .xml data.

As of 25-Oct-2021 CIPO’s online trademark database includes 2,774 extension applications.  623 of those applications are currently active—the remaining 2,151 are inactive (i.e. abandoned, deemed never filed, inactivated, refused, withdrawn, etc.).  The current status of the 623 active extension applications is as follows:

Two of the currently active extension applications pertain to certification marks; 617 pertain to trademarks.  The other four are so-called specific marks, which may be unfamiliar to some current practitioners.  Specific marks derive from the Trade Mark and Design Act, (1868) 31 Vict., c. 55; RSC 1906 c. 71 (the TMDA).  Specific marks were dropped from the Unfair Competition Act (1932) 22-23 George V c. 38 (the UCA—successor to the TMDA).  See General vs. Specific Marks for further details of specific marks.

Why do we see currently pending applications in the specific mark category—almost a century after the abolition of that category?  Because CIPO puts extension applications in the same category as the original application which yielded the registration that is to be extended.  For example, extension application no. 127966-01 was filed 25-Mar-2021, seeking extension of registration TMDA39544 which issued 27-Mar-1926 from application no. 127966 filed pursuant to the TMDA.  As highlighted in the two online database extracts below, both the extension application (on the right) and the original application (on the left) are in the specific mark category (click to enlarge the image):

CIPO’s naming convention for its trademark .xml files is based on the application serial numbers CIPO assigns whenever a new application is filed for any mark.  For example, the file named 127966-01.xml pertains to the extension application to which CIPO assigned serial number 127966-01.  CIPO’s .xml file for the original application no. 127966 is named 127966-00.xml

CIPO’s trademark .xml file names include a 2-digit suffix, e.g. 00 in the case of the .xml file for the original application no. 127966; and 01 in the case of the .xml file for the extension application no. 127966-01.  00 suffixes pertain to original (i.e. non-extension) applications; non-zero suffixes pertain to extension applications.  CIPO suppresses 00 suffixes in records displayed via the online database.  Non-zero suffixes, e.g. 01, 02, 03 etc. are displayed to distinguish extension applications from the original application and from different applications to extend the same registration.

Sometimes, two or more applications to extend the same registration are concurrently pending, e.g. to accommodate expanded use of a mark, to suit certain prosecution objectives, etc.  For example, as of 25-Oct-2021, three separate applications to extend registration TMA924542 are pending, as shown in the online database extract below (click to enlarge the image):

There is no limit to the number of extension applications which may be filed.  For example, at least 13 separate applications have been filed to extend registration TMA120178 which issued from original application no. 247587, as can be deduced from the online database extract below (click to enlarge the image):

Conceivably, more than 13 extension applications may have been filed in respect of some registrations, but that cannot be readily verified because CIPO removes successful extension applications from the online trademark database and from the .xml dataset.  Specifically, if an extension application succeeds, CIPO modifies the existing registration by “merging” the goods / services details from the approved extension application into the existing registration’s goods / services statement.  The extension application is then removed.  See Working With CIPO’s ‘Delete’ Files for further details.

The following table lists the 10 oldest currently active extension applications as of 25-Oct-2021 (click to enlarge the image):

The next table lists the Top 10 filers of currently active extension applications as of 25-Oct-2021 (click to enlarge the image):

The final table breaks down currently active extension applications (as of 25-Oct-2021) by applicant’s country (click to enlarge the image):

Have a question about Canadian trademarks that might be answerable by reference to CIPO’s data?  Send me an email—I’ll try to look into it and let you know (subject to these Terms & Conditions).