Amendments to the Examination Manual: Requests for Expedited Examination, Publication Date: 2000-02-23

Requests for Expedited Examination

Publication Date: 2000-02-23

This Practice Notice constitutes an amendment to the Trade-marks Examination Manual. The text appearing in section II.2 of the Examination Manual is deleted and replaced with the following text:

Trade-mark applications are generally examined in order, according to the filing date of the application. There are no specific provisions in the Trade-marks Act or regulations concerning the acceleration of the examination process. On an administrative basis, however, past Office practice has been to expe-dite the examination of an application where the applicant has made awritten request for expeditious handling and provides an explanation of the circumstances that would justify advancing the application out of its normal order. The following examples are currently set out in the Trade-marks Examination Manual as acceptable reasons:

The mark is in use and it has come to the applicant's attention that there may be confusion with another mark in the marketplace.

The application is for a proposed trade-mark and the applicant wants to know if it could be registered before a large amount of money is spent on advertising or production costs.

The advancement of an application out of routine order creates a favored position at the expense of all other applicants. Given the current ease with which applicants are permitted this special handling and the growing number of applications it has become necessary for the Office to reconsider the require-ments for expedited examination. The above-noted reasons are not considered sufficient to justify expedited examination.

Effective March 1, 2000, requests for expedited examination must be in the form of an affidavit or stat-utory declaration, by a person having knowledge of the facts, setting out the specific circumstances and reasons for the request. The decision to accept or refuse the request will be based on whether or not there exists a risk of prejudice to the applicant's rights that outweigh the equitable principle of examining applications in the order in which they are filed.

Requests for expedited examination submitted with the application will be considered at the formalities stage and the decision to accept or refuse the request will be included with the acknowledgment notice. Requests for expedited examination submitted at any time after the filing of the application will be considered by examination staff.

This amendment will be incorporated into the paper version of the Manual when it is next printed.