Filing, Prosecution and Examination Practice Before CIPO
This domain tests front-end practice: preparing and filing an application, responding to examiner’s reports, amending or dividing applications, and moving a mark to advertisement or appeal.
Filing and examination
An application under s. 30 must identify the applicant, give an address, include a representation of the mark, list goods and services in ordinary commercial terms grouped by Nice class, and state either proposed use or first-use dates. The filing date is the date CIPO receives a complete application. Examination checks formalities, registrability, entitlement and confusion with registered marks. An examiner’s report sets a six-month response deadline; failure to respond leads to abandonment. Amendments may delete goods or services, correct errors or clarify wording, but cannot add goods or services or materially alter the mark. A divisional application preserves the original filing date for divided goods or services. Approval leads to advertisement in the Trademarks Journal; refusal can be appealed to the Federal Court within two months.
Worked example
An applicant files for “SILK” for hair care products in Class 3 and retail services for hair care products in Class 35. The examiner objects that “SILK” is clearly descriptive of hair care. The applicant deletes the Class 3 goods, keeps the Class 35 retail services and argues that “SILK” is not descriptive of retail services. If the examiner maintains the objection, the applicant may appeal. Adding “cosmetics” after filing is not permitted because it would add a new good; a divisional application filed earlier would have been the correct route if the applicant wanted separate treatment.
Traps
Missing the six-month response deadline; assuming extensions are automatic; adding goods or services after filing; ignoring per-class fees; treating advertisement as registration; and appealing to the wrong court or missing the two-month appeal period. Also watch for a material alteration of the mark through amendment, which is not allowed.