The perils of popularity
Blake R. Wiggs assesses the impact of Canada’s accession to the Madrid Protocol on CIPO.
The Canadian Intellectual Property Office (CIPO) began receiving Madrid registrations designating Canada on 17th June 2019 upon the coming into force of extensive amendments to the Trademarks Act (RSC 1985 c. T-13). As of 26th April 2021, CIPO had received 33,251 inbound Madrid registrations, according to my analysis of its trade mark .xml data, which contains details of all 1,782,294 marks in the Canadian trade mark system.
As any Canadian trade mark practitioner can tell you, CIPO has a backlog of cases awaiting initial substantive examination. As of 26th April 2021, that backlog exceeded 161,000 applications, including many more than two and a half years old.
This backlog is largely a consequence of CIPO’s decision to prioritise Madrid applications so that it can meet the deadlines imposed on it by the Protocol. For example, as of 26th April 2021, CIPO had conducted at least an initial examination for more than 96% of all inbound Madrid cases with June 2019 international registration (and thus deemed Canadian filing) dates. However, less than 6% of the non-Madrid cases filed in June 2019 had been examined as of 26th April 2021.
The table below sets out the examination status of the 12,377 Madrid and 35,164 non-Madrid cases filed from June 2019 through January 2020 (as captured on 26th April 2021). As you can see, CIPO has expended significant examination resources on Madrid cases relative to non-Madrid cases.
To be fair, CIPO may not have anticipated Canada’s sudden popularity as a designated state for Madrid filings. According to the WIPO’s IP Statistics Data Center, Canada is currently in fourth place worldwide – behind only the UK, the US and China – in terms of the number of 2021 Madrid filings designating those jurisdictions (disregarding the 27 EUIPO countries).
On 3rd May 2021, CIPO issued two Practice Notices addressing the backlog. One provides that: examiners will reduce the number of reports issued; CIPO will “where reasonable” refuse trade marks in a more timely manner; and examiners will consider an argument only once. The Notices also urge applicants to provide complete responses to examiners’ reports.
Refusals have been rare in Canadian trade mark practice, but that may soon change. With the backlog growing week by week, significant action is required to maintain confidence in Canada’s trade mark system.
|
Case filing date |
% examined (at 26th April 2021) |
|||
|
Year |
Month |
Madrid |
Non-Madrid |
Overall |
|
2020 |
January |
5.51% |
2.00% |
3.08% |
|
2019 |
December |
11.64% |
2.65% |
5.54% |
|
2019 |
November |
39.45% |
3.47% |
14.36% |
|
2019 |
October |
68.25% |
4.93% |
23.41% |
|
2019 |
September |
80.77% |
3.83% |
25.28% |
|
2019 |
August |
87.98% |
4.16% |
25.41% |
|
2019 |
July |
93.22% |
4.27% |
29.32% |
|
2019 |
June |
96.85% |
5.68% |
15.96% |
Blake R. Wiggs is a retired intellectual property lawyer based in Vancouver, British Columbia. He is the author of the Canadian Trademark Intelligence blog.
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