Have you been waiting for what seems like ages to hear back from the Canadian Intellectual Property Office (CIPO) about a recently filed trademark, patent or industrial design application? You are not alone. CIPO has recently released its year end service statistics for examination wait times and the numbers confirm that wait times have increased in all areas.
2019 marked the implementation of extensive changes to the Trademarks Act and related regulations which have permitted Canada to accede to a series of international treaties, including the Madrid Protocol, the Singapore Treaty on Trademarks and the Nice Agreement. The coming into force on June 17, 2019 of these changes brought about the most sweeping legislative change to Canadian trademark law in a generation. In particular, Canada’s accession to the Madrid Protocol has allowed trademark owners in other countries to more easily extend protection of their trademarks into Canada, resulting in a significant increase in the number of trademark applications being awaiting examination in Canada.
As of October 31, 2019, CIPO has a total workload of 149,712 trademark applications that it is processing. Of those applications 93,646 applications have been filed but are waiting to start examination. Currently the average waiting time for a first examination report is approximately 16.8 months after filing. By comparison wait times averaged only 6.5 months in 2016-2017. CIPO is committed to bringing down the wait times and has hired and is training 23 new trademark examiners, with further recruitment to occur in the spring of 2020. CIPO has set a goal of reducing the wait time for first examination to just 7 months, and are working toward that goal over a 3-year horizon.
Trademark Opposition Board
Trademark applicants and opponents are experiencing long delays in obtaining decisions in opposition proceedings and cancellation proceedings. Although the number of statements of opposition and section 45 cancellation requests have dropped off somewhat over the last three years, the wait time for oral hearings has increased dramatically. Oral hearings are being scheduled an average 19 months after requests are filed in opposition proceedings, and 16 months in section 45 proceedings. After hearings occur, the parties wait a further 3-4 months for decisions to be rendered.
Copyrights and Industrial Designs
Copyright and Industrial design applicants are experiencing similar delays receiving examination reports. The wait time for the examination of industrial design applications has ballooned to 13 months from filing on average. The increased wait times appear to be attributable to an increased number of industrial design application filings in 2018 and 2019. The increase is likely due to a greater number of foreign applicants filing Canadian industrial design applications following amendments to the Industrial Designs Act implemented in October 2018 which saw Canada join the Hague System for the international protection of industrial designs.
2019 has been a turbulent year for CIPO and for Canadian applicants as we have transitioned to new intellectual property legislation. We look forward to streamlined procedures and increased efficiency in the years to come.