In a pilot program intended to address the major backlog of pending trademark applications, the Canadian Intellectual Property Office ('CIPO') has started using artificial intelligence to conduct preliminary examinations of such applications. The pilot program is restricted to reviewing the associated goods and services identified in pending applications.
CIPO states that 70% of trademark applications that select their associated goods and services from its pre-approved list get approved without any objections. In addition, trademark applications that use CIPO's pre-approved list get examined roughly 15 months earlier than applications with a customized identification of the associated goods and services. The goal of the pilot program seems to be directed at encouraging applicants to select their associated goods and services from its pre-approved list when possible.
After an initial review by the artificial intelligence platform, CIPO will send out a letter stating the results. Currently, the results are restricted to notices that state:
(1) the goods and services statement are acceptable;
(2) the goods and services are not properly classified; or
(3) the goods and services do not appear in CIPO's pre-approved list and are not acceptable because they lack sufficient specificity.
If the goods and services are deemed acceptable, the application will be prioritized for examination. If the goods and services are not deemed acceptable, applicants are invited to review their application and file a revised application.
There is no requirement to respond to the notice, but if the applicant elects to revise their application to adopt an identification of goods and services from the pre-approved list, the examination of their application will be accelerated.
Unfortunately, the notices issued by the pilot program do not identify the specific goods and/or services flagged by the artificial intelligence in its review. As a result, the notices are of limited assistance in ensuring that any revised application will correct the problem if the applicant cannot find a satisfactory description of its particular goods and services on the pre-approved list.
Since at least 2017, the average time from filing to first examination of a new trademark application in Canada has increased almost exponentially – from 254 days in 2017 to 703 days in 2020. That's nearly two years just to get human eyes on your application. Compare this to the United States, where the same turnaround took roughly 85 days in 2017 and 111 days in 2020.
For those applicants who took care to identify the associated goods and services with sufficient specificity by reference to the pre-approved list and to assign them to an appropriate class when filing their trademark applications, this pilot program should accelerate the examination of their applications. For those who cannot use the pre-approved list for whatever reason, it may only make more work with no guarantee of any reward.
 Figures pulled from WIPO’s IP Statistics Data Center < https://www3.wipo.int/ipstats/ >. CIPO’s own data differs, see ‘Trademark Statistics: 2020 to 2021’, Figure 3 at < https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04977.html >