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Antonio Turco, Chari Prenol Slaney Turco.

Trademark application backlog due to understaffing, slow response to pandemic: lawyer

Thursday, November 18, 2021 @ 9:15 AM | By Terry Davidson

A Toronto lawyer is calling out Canada’s trademark issuing agency for a backlog in handling Canadian trademark applications and a practice of allowing foreign applicants to leapfrog ahead.

Intellectual Property lawyer Antonio Turco says a backlog in the Canadian Intellectual Property Office’s (CIPO) examination of domestic applications is detrimental to Canadians, generally, but especially bad for small businesses — many of which lack the resources to obtain faster service by applying through international channels.

“It is detrimental to Canada’s standing … in the trademark world,” said Turco, a partner with Chari Prenol Slaney Turco.

Turco pointed to application status data on a CIPO webpage.

As of Nov. 16, CIPO was examining Canadian applications that did not use the agency’s pre-approved list of goods and that were filed the week of Dec. 20, 2018. The date for applications that used the pre-approved list was June 15, 2019.

Antonio Turco, Chari Prenol Slaney Turco

Antonio Turco, Chari Prenol Slaney Turco

“My understanding is that they’ve just not been hiring examiners, so they just have not been staffing properly,” said Turco. “The trademarks office says that it’s because there has been this big increase in the number of filings, but that’s not really borne out by the statistics.”

Turco maintains that the number of filings have remained relatively steady between February 2017 and May 2021.

In contrast, says Turco, the CIPO gives faster service to applications coming in from foreign countries due to international obligations.

According to the CIPO, the agency is now examining foreign applications that were filed the week of July 9, 2020 under the Madrid Protocol — a centralized filing system facilitated by the World Intellectual Property Organization (WIPO) for a list of signatory countries, including Canada.

Turco was asked why the CIPO is quicker to respond to Madrid applications.

“The reason is the Madrid Protocol requires countries that sign up to examine the application within 18 months of filing. And, so, the trademarks office is under a treaty obligation. The way that they’ve addressed the problem is instead of hiring more examiners, they’ve just decided to give preferential treatment to non-Canadians.”

According to WIPO statistics, Canada was the second slowest on a list of 80 countries in 2020 when it came to getting a first look at a trademark application.

According to the data, it took Canada an average of 703 days to take “first office action” on an application after its filing. The only country on that list with a higher number was Vietnam, at 832 days. By comparison, the U.S. sat at 111 days.

Turco says CIPO blames the delay in handling domestic applications on a rise in applications due to Canada’s joining the Madrid Protocol in June 2019. But Turco, while acknowledging “big jumps” during that time, maintains that delay was happening before that.  

“When you look at the filing data, it doesn’t justify that big of a backlog. The trademarks office has said in the past — they like to blame the change in the law that happened in June 2019 … when Canada joined Madrid. They point to, Oh, there has been all of these new filings since that time, but when you look at the [data], the delay has been growing since 2017.”

Turco said the ongoing COVID-19 health crisis has also contributed to delay.

“COVID made it worse obviously because the trademarks office took a long time to really adapt to a remote working environment,” he said.

When asked for comment, a CIPO spokesperson sent an e-mail pointing to the 2019 spike in applications, stating that CIPO is making efforts to hire more trademark examiners.

“As reflected in the IP Canada report of 2020, the 68,277 trademark filings seen in 2019 marked a new record, namely an 8 [per cent] increase since the previous year and an overall 51[per cent] growth with respect to 2010 levels,” said Alison Reilander, media relations manager with Innovation, Science and Economic Development Canada, who went on to say that “[f]ilings for the 2020-2021 fiscal year have surprisingly increased (estimated 14 [per cent] to date), notwithstanding the ongoing COVID-19 pandemic.”

Reilander said CIPO is “implementing a series of measures to reduce turnaround time and harmonize with that of our main trading partners” and respond to “a higher than anticipated volume of trademark filings” following Canada’s joining the Madrid Protocol.

CIPO has launched a “robust hiring campaign, through which 79 trademark examiners were hired with a plan to hire additional staff over the next two years.”

As for foreign applications being put before those domestic, Reilander confirmed CIPO’s deadline obligations under the international filing system.

“With more than 35,000 designations filed with [WIPO], CIPO is faced with much higher than anticipated filings through the Madrid System for the international registration of trademarks administered by WIPO. These applications come with an obligation to examine within a period of 18 months.”

Reilander also acknowledged complications brought on by the COVID-19 health crisis, saying CIPO “experienced a disruption to its normal operations” at the beginning of the pandemic.

“While the Office remained open, examination slowed for trademarks given that staff were instructed to work from home and some operational procedures were paper-based requiring the presence of personnel in the office. The COVID-19 pandemic had its biggest impact during March and April of 2020. A number of accommodations were required for CIPO to remain open and operational.”

Reilander went on to state that CIPO “has since addressed this challenge and staff are now efficiently working remotely.”

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