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).

The College’s Agent Roster as of 12-Oct-2021

On Monday, 28-June-2021 The College of Patent Agents & Trademark Agents (CPATA or “the College”) took over from CIPO as the regulator of registered (now, “licensed”) Canadian patent and trademark agents.  This post examines the current status of the College’s agent roster—which remains a work in progress.

Application Pendency—How Long?

A reader emailed me to ask “What’s the longest a trademark application can stay pending without being approved or refused by the CIPO?”  The simplistic answer is “theoretically, forever”; but I'll provide some pendency numbers—and some historical observations—in this post.

Appeals of ex parte examination Refusals

A reader emailed me to ask if CIPO’s trademark .xml data can be mined to determine how often applicants appeal or seek judicial review of prosecution refusals.  The answer is a qualified yes.

Top Section 9 Filers

So far in 2021 the European Data Protection Board is the top filer of Canadian Section 9 Prohibited/Official Mark applications, with 37 such filings.

Dates of Trademark Applications currently at Examination

CIPO’s main trademark web page (here) has a section headed “Dates of Trademark Applications currently at Examination” in which the oldest date listed (as of 01-Sep-2021) is “Week of December 3rd, 2018”.  Does this mean that there are no unexamined applications with earlier filing dates?  No it does not.

Top 20 Design Marks

The previous post looked at Canada’s Top 20 Word Marks.  That may have left you wondering about top design marks.

Top 20 Word Marks

A client contacts you, enthused about a new mark that you must protect forthwith.  After the big reveal you groan inwardly—it’s another laudatory mark.

Canada’s 21st Century Filings & Applicants

402,768 applicants have filed a total of 1,104,036 Canadian trademark applications so far this century, i.e. between 01-January-2000 and 26-July-2021.  25% of those filings were made by less than 1% of those applicants.

1.8 Million Marks and Counting

CIPO’s trademark data update for the week ending 12-July-2021 increased the number of marks on the Canadian trademarks register to 1,800,083.

The Annual Opposition Rate

As a follow-up to Counting Opposition Cases, this post presents some charts showing opposition activity over the past 25 years.

Tracking Expedited Examination

CIPO does not update its trademark .xml data to flag instances in which the examination process is informally expedited.  However the data can be mined to detect such instances, e.g. filing-to-examination in 7 days; filing-to-approval in 17 days; as in the examples below.

Counting Opposition Cases

How many opposition cases has CIPO dealt with over the years?  The answer depends on the way in which you count oppositions and also depends on what qualifies as an “opposition”.

The Perils of Popularity

The Chartered Institute of Trade Mark Attorneys has published a brief article titled “The Perils of Popularity” in which I discuss CIPO’s backlog of unexamined trademark applications.  See page 21 of the July/August 2021 issue of CITMA Review (here).

Status Update 2-Years Post-CIF

This post examines the current status (as of 21 June 2021—CIPO’s most recent data refresh) of the applications CIPO has received since coming into force (CIF) of the 17 June 2019 amendments to the Trademarks Act, RSC 1985 c. T-13 (TMA).