By Paula Clancy
Several of our foreign clients who have filed a Canadian designation using the Madrid Protocol have contacted us to inquire about the issuance of a "Notice of Possible Opposition" in relation to their application. We thought it would be helpful to explain why CIPO is issuing these Notices, even though opposition proceedings have not been commenced.
CIPO is obligated to issue any notice of provisional refusal in respect of Protocol Applications within 18 months of being notified of the Canadian designation. If such notice is not issued within the 18 months, the application is deemed to be approved and will proceed to registration.
The issue is that there are currently significant delays in prosecution at CIPO. For non-Protocol Applications, it is taking an average of 24 months for an application to be examined. Moreover, there may be situations where CIPO approves the application within the 18 month period, however, an opposition is commenced after the deadline. It is for this reason that CIPO has been pre-emptively issuing these notices in relation to Protocol Applications, which in turn allows it to send a provisional refusal beyond the 18-month window. Therefore, if you receive one of these notices, this does not necessarily mean that an opposition has been commenced.
We recommend that foreign associates appoint a Canadian Trademark Agent to help monitor the status of their clients' applications. Otherwise, CIPO will correspond directly with the applicants. Of course, we would be pleased to appoint our firm as agent of record on behalf of your clients.