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Canadian Trademarks Office Rolls Out Automated Analysis to Expedite Examination

04/07/2022

On April 6, 2022, the Canadian Trademarks Office announced the roll-out of the automated analysis of goods, services, and Nice classification information in national unexamined trademark applications to help decrease the wait times in examination and registration in Canada. (We previously wrote about this initiative while it was a pilot project here.)

As part of a series of measures to reduce wait times, last year, the Office began examining new trademark applications more quickly if they were filed using a pre-approved list of goods and services. To this end, the Goods and Services Manual has been expanded to 109,437 entries. At present, trademark applications filed using the pre-approved list have a wait time to examination of approximately 15 months less than other applications.

To encourage applicants to file a new application or amend an existing unexamined application using the pre-approved list of goods and services, the Office will now provide an automated pre-assessment of goods, services, and Nice classification information contained in all national unexamined trademark applications. The Office will issue pre-assessment letters that will inform applicants or their appointed trademark agent of the results of the automated analysis. Depending on the outcome, the letter will provide information that the application contains either:

  • acceptable goods or services;
  • goods or services that are not classed;
  • an improper Nice class;
  • unacceptable goods or services; or
  • a combination of the above.

Depending on the nature of the pre-assessment letter, the applicant may decide to submit an amended application using the pre-approved list of goods, which will accelerate its examination. The Office has stated that if the automated analysis determines that the application contains acceptable goods or services without having used the pre-approved list, the examination of the application will also be accelerated.  It is important to note that applicants will not be obliged to take any action in response to the automated letters.

Cassels was one of a small group of law firms and trademark agents originally selected to participate in the pilot phase of this initiative. We will be forwarding the Office’s automated pre-assessment letters to our clients at no charge. For interested clients, we will provide advice as to whether it is worthwhile to take some action in response or to wait for a formal examiner report from the Office. We can also assist clients with submitting previously registered goods and services to the Office for inclusion in the pre-approved list.

The members of the Cassels trademark team would be pleased to answer any questions you may have regarding this Canadian Trademarks Office initiative or the pre-approved list of goods and services.

This publication is a general summary of the law. It does not replace legal advice tailored to your specific circumstances.

For more information, please contact the author of this article or any member of our Intellectual Property Group.