As of 17 January 2020, the Canadian Intellectual Property Office (CIPO) will no longer be granting automatic six-month extensions of time for responses to office actions. This change will not affect trademark applications where an office action has been issued before 17 January 2020. CIPO's new rules will particularly affect office actions containing objections to the statement of goods and/or services and other technical objections (e.g., Nice Classification objections), for which the justification of an extension will become more difficult.

An applicant will still have the standard six month term to respond to an office action. However, an extension of up to six months to file a proper response (which addresses all objections, requirements or requests raised in the report) will now only be available for exceptional circumstances. Reasons for such exceptional circumstances must be provided before the six month period to respond ends, or else the applicant will be considered in default. CIPO has provided the following examples of what could amount to an exceptional circumstance that would justify and extension of time:

1. Recent change in trademark agent.

2. Circumstances beyond the control of the person concerned (such as illness, accident, death, bankruptcy).

3. Pending transfers of an application or registered trademark, which would overcome a confusion objection.

4. The cited co-pending and confusing trademark is the subject of an opposition proceeding.

5. The cited registered trademark is subject to a s. 45 (expungement/cancellation) proceeding.

6. Active negotiation of consent from the holder of a cited official mark.

7. Division of a Protocol application is awaiting notification from the International Bureau.

8 Response is to an objection which could lead to a refusal under:

a) S. 37(1)(b) - the trademark is not registrable;
b) S. 37(1)(c) - the applicant is not the person entitled to registration of the trademark because it is confusing with another trademark for the registration of which an application is pending; or
c) S. 37(1)(d) - the trademark is not distinctive.

9. Compilation of evidence is required to show that the trademark was distinctive at the time of filing (which is related to a s. 37(1)(d) objection).    

Accordingly, it will help tremendously if you provide the complete instructions and information required to file a proper response to an office action before the standard six month term to respond expires. This should avoid any complications that may arise in trying to obtain an extension under the new policy and of course would also mean your application may proceed to publication more quickly.

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