Practitioners and applicants alike have expressed dismay and dissatisfaction with CIPO’s pre-assessment initiative, which began on March 23, 2022.
Pre-assessment letters sent on national (non-Madrid) Canadian trademark applications report the results of automated (AI) analysis of an application’s goods / services description and Nice classification(s). 85,184 letters have been sent as of June 20, 20221. They express one of six possible results:
Letters reporting ‘Acceptable Goods or Services’ state “As a result of the analysis, the examination of this application will be accelerated. No further action is required and this application will be distributed for examination in priority sequence in due course”. Letters reporting any other (i.e. negative) result encourage amendment of the application’s goods / services description utilizing CIPO’s pre-approved list of Acceptable Goods or Services.
Negative pre-assessment letters provide no information beyond that tabulated above. This is problematic because goods / services descriptions often recite dozens of goods or services items within a single Nice classification. Allegedly problematic goods or services are not identified, even if only one item out of dozens triggers a negative result. Practitioners and applicants are left wondering what the problem might be, and in many cases may reasonably believe that there are no issues with the goods / services description that require amendment.
One option is to analyze the goods / services description in an effort to identify potentially problematic terms and file a Voluntary Amendment modifying or removing such terms. However this entails guesswork that may not identify the actual problematic terminology¾as perceived by CIPO’s pre-assessment AI¾resulting in an unproductive expenditure of time and money with the concomitant risk of reducing the applicant’s scope of protection by “fixing” a non-existent problem.
Another option is to do nothing. After all, the pre-assessment letters stipulate that a response is not required. Some practitioners and applicants prefer to await the issuance of a substantive examination report which will ideally include a human examiner’s assessment of the goods / services description and Nice classification(s). This does not mean that a pre-assessment letter can be ignored. Like any other communication from CIPO, a pre-assessment letter must be reviewed, docketed, scanned, indexed, stored in a document management system and reported to the applicant together with recommendations for action or inaction, as the case may be. All of that imposes a significant, time-consuming overhead burden, considering the torrent of pre-assessment letters that have issued thus far. The burden is so significant that it is contributing to frustration and low morale among clerical staff tasked with processing large volumes of pre-assessment letters, particularly in firms where different practitioners take different approaches to the handling and reporting requirements.
A further problem is that practitioners and applicants must sometimes contend with multiple pre-assessment letters pertaining to the same application. Besides increasing the overhead burden, this is confusing. Applicants are left wondering if a previous pre-assessment letter was incorrect or if CIPO’s pre-assessment AI perceives different types of problems with the application’s goods / services description. Pre-assessment letters expressing the “Multiple Reasons” negative result compound the problem, as does CIPO’s practice of issuing “replacement” pre-assessment letters in some cases2.
Another problem is that despite the implied promise of expedited handling of applications which are amended to utilize only goods / services terminology taken directly from CIPO’s pre-defined list of Acceptable Goods or Services, many such applications appear to have been left to languish in the backlog of unexamined applications, which currently contains over 190,000 applications filed since January 2019.
Yet another problem concerns the “Retired Goods or Services” pre-assessment result. This is understood to mean that a goods / services expression which was formerly acceptable due to inclusion of the expression in the pre-defined list of Acceptable Goods or Services, is no longer acceptable because the list has been updated to modify or remove that expression. This is very frustrating, since many applications currently being examined were filed about three years ago. It had been understood that CIPO would “grandfather” these applications and approve their formerly acceptable goods / services expressions, but this does not appear to be happening in all cases. Practitioners and applicants are thus faced with a moving target that cannot be met due to the excessive time required for an application to be taken up for examination, in comparison to the pace at which CIPO is modifying the pre-defined list of Acceptable Goods or Services. As of June 20, 2022, over sixty-five hundred pre-assessment letters have expressed the “Retired Goods or Services” result. This further exacerbates the burden imposed on practitioners, who must carefully explain to their clients that CIPO has moved the goalposts. Otherwise, clients—many of whom are foreign trademark practitioners—may wonder about the Canadian agent’s competence; an extremely disappointing and embarrassing consequence.
Examination reports have begun to issue on applications which have undergone pre-assessment. Early indications are that the reports make no reference to the pre-assessment letters and are replete with painstakingly underlined goods / services description extracts that are allegedly “not in specific and ordinary commercial terms”, painstakingly bolded terms that “appear to be improperly classed according to the Nice Classification”, etc. (i.e. no different from examination reports issued before the pre-assessment initiative). It thus appears that examination as to goods / services description and Nice classification is independent of pre-assessment and vice versa. If that is so, then what is the point of pre-assessment?
Overall, the experience of agents and applicants with the pre-assessment initiative has been profoundly negative. The pre-assessment letters are so vague, unhelpful, and unreliable as to amount to junk mail. Many applicants and foreign associates with multiple Canadian applications have instructed their Canadian agents not to waste their time by reporting such letters to them. So while a small number of applicants may capitulate and choose goods / services descriptions from the limited selection available in the pre-defined list, most applicants are confused, frustrated and/or annoyed by these letters, which are unlikely to meaningfully expedite prosecution given the fact that a human decision maker (i.e. CIPO examiner) will ultimately have to decide whether the goods / services description is acceptable. One wonders if the resources CIPO has invested in generating these letters and the funds spent mailing them out would have been better spent on actually advancing the prosecution of the backlog of pending cases.
On the flip side, CIPO examiners cannot enjoy the task of nit-picking through excessively detailed goods / services lists to identify unacceptable terminology or classification issues and painstakingly particularize them in their reports. An apparent objective of the pre-assessment initiative was to relieve examiners of that burden by identifying and encouraging resolution of such issues prior to examination. However, that has not happened¾neither examiners nor applicants nor agents appear to have benefited from the initiative.
A better approach may be that taken by the China National Intellectual Property Administration: imposition of a surcharge for each goods / services item in excess of 10 items per classification. That would tend to focus goods / services descriptions on items of actual interest and discourage excessively detailed lists composed without sufficient regard for the confusion principle reflected in sections 2, 6 & 20 of the Trademarks Act, RSC 1985, c. T-13. However unless implemented retroactively, which is unlikely, that would not alleviate the current backlog of unexamined applications. Perhaps cherry-picking cases with manageable (i.e. brief) goods / services descriptions for examination ahead of those with lengthier descriptions would help get the message across. In the meantime, the backlog is trending upward as shown in the chart below (click the chart image to enlarge it). Without significant change, examination delays exceeding three years will be the norm for Canadian trademark applicants.
1 See Trademark Pre-assessment Letters for details.↩
2 See Pre-Assessment Data Disconformity for details.↩
