This practice notice replaces the practice notice entitled Extensions of Time in Examination, published in the Trademarks Journal on July 15, 1998.
This practice notice comes into effect on March 11, 2010.
Effective immediately, the Office will generally grant an applicant one (1) extension of time of up to a maximum of six (6) months to file a response to an examiner's report, if the request is justified. No requests for any further extensions of time will generally be considered.
Upon the expiration of twelve months from the initial date of the examiner's report, the Office will require that the applicant demonstrate exceptional circumstances justifying why it is not yet possible to file a proper response to an examiner's report. The Office considers that a proper response consists of a response wherein all objections and/or requests raised in the examination report have been addressed.
If at the expiry of the twelve month period mentioned above the applicant fails to file a proper response or if the reasons provided are not considered to justify a further extension of time, the applicant will be considered in default in the prosecution of the application pursuant to provisions of Section 36 of the Trade-marks Act and a notice of default will be issued.
The following are examples of what could amount to an exceptional circumstance that would justify a further extension of time.
- Recent change in Trademark Agent
If there has been a very recent change in the trademark agent, the Registrar may grant a further extension of time allowing the new trademark agent to become familiar with the file.
- Circumstances beyond the control of the person concerned
Examples of factors that could amount to exceptional circumstances beyond the control of the person concerned include illness, accident, death, bankruptcy or other serious and unforeseen circumstances.
- Assignment
There has been a very recent assignment of the trademark.
- Certified copies
The copy of the registration certified by the office in which it was made has not yet been issued since the foreign application has yet to proceed to registration.
- Citation pending application
If the cited co-pending and confusing mark is: possibly going to be abandoned within the next two months; is subject of opposition proceedings initiated by the applicant.
- Citation registered mark
If the cited registered mark is subject to a Section 45 proceeding initiated by the applicant.
- Official mark
If the applicant is negotiating for a consent from the holder of an official mark.
This practice notice is intended to provide guidance on current Trademarks Office practice and interpretation of relevant legislation. However, in the event of any inconsistency between this notice and the applicable legislation, the legislation must be followed.