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Extraordinary Circumstances Part I – The Impact of Covid-19 on Canadian Trademarks

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April 8, 2020

Unprecedented. Unparallelled. Unheard-of. All of these adjectives, and more, have been used to describe the current situation the world is facing in the midst of the novel coronavirus pandemic. Another apt word is “extraordinary”. The concept of “extraordinary circumstances” has been relied upon in appropriate circumstances in the legal world to justify the seeking of extensions of time of various deadlines.

Trademarks practice is inherently deadline-oriented. Deadlines apply to many aspects of the filing and application process, the opposition process (whereby a third party can formally object to a trademark application becoming registered) and the court process (often used by trademark owners to enforce their rights). Deadlines also apply to proceedings in which trademark owners are asked to provide proof that their trademarks have been used in Canada in order to maintain their validity.

In the constantly-shifting landscape caused by the pandemic, the following protocols have been developed with respect to extensions of time and other relevant aspects of Canadian trademarks practice. Note that these protocols are constantly evolving, and the relevant websites should be checked frequently for the most current information.

This post will deal with the impact of Covid-19 on trademark applications and trademark opposition proceedings in Canada. Future posts will consider other impacts of the pandemic on different aspects of trademarks practice. The relevant government website for trademark applications and trademark opposition proceedings can be found here: http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04767.html.

Trademark Applications

Please refer to this link for the most updated information: http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04764.html.

The Canadian Trademarks Act (together with other Canadian intellectual property statutes) gives the Registrar of Trademarks (or other appropriate delegate) the power to designate certain days as dies non, i.e. days which do not count as a deadline. For example, Saturdays and Sundays, as well as all federal statutory holidays, among others, are considered designated days. Thus, if a deadline falls on a Saturday, it will be met by taking the appropriate action by no later than the Monday immediately following.

With the impact of Covid-19 becoming increasingly serious by mid-March, CIPO announced that March 16th to 31st inclusive had been designated under the Trademarks Act. This was followed last week by an announcement that the designated dates now include April 1st to April 30th.

Takeaway:   Any deadlines falling on March 16th up to and including April 30th are now automatically extended to May 1st.

This period may be further extended if circumstances warrant. CIPO is nonetheless encouraging applicants to meet deadlines falling within the designated dates as promptly as possible, likely in an attempt to avoid an increased volume of responses when the period of designated dates is over.

Additional extensions of time may be available even beyond the designated dates. For example, with respect to any Examiner’s Reports (written objections to the application issued by a CIPO Examiner), the deadline to file a response can be extended under “exceptional circumstances”. The relevant Practice Notice lists some examples of what might constitute exceptional circumstances, including circumstances “beyond the control of the person concerned”, such as “illness, accident, death, bankruptcy, or other serious or unforeseen circumstances”. CIPO has now confirmed that “a pandemic, which affects the ability of the applicant to respond, would be categorized as a circumstance beyond the applicant's control and thus an exceptional circumstance, which would justify an extension of time”.

Takeaway:   Inability to respond to an Examiner’s Report in a timely manner due to the Covid-19 pandemic constitutes an exceptional circumstance justifying an extension of time.

In a scenario where the deadline to respond to an Examiner’s Report falls on a designated date and is extended to May 1st, if the applicant is still unable to meet that deadline due to circumstances related to Covid-19, an additional 6-month extension can be sought. Note that a letter must be sent to the Examiner explaining the factors giving rise to the applicant’s inability to provide a substantive response.

Trademark Renewals and Priority Claims

Despite the extensions of time available as described above, note that different rules apply to extensions requested to renew an existing trademark registration or to make a priority claim (discussed below).

A trademark registration, once granted, must be renewed upon the expiry of each term. The renewal is effected upon request and with the payment of a fee. If the initial renewal deadline is not met, a grace period of 6 months will apply. If the registered owner of the trademark is still unable to take the necessary steps to renew the registration before the expiry of the grace period, the owner can apply for a further extension as long as the inability to act was due to force majeure. The request for an extension beyond the grace period can only be made after the grace period has expired, and any further extension can be granted only for a maximum of 7 days. The request for the extension due to force majeure must explain the reasons for the inability to meet the deadline. The relevant Practice Notice can be found here http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04447.html, and lists virus/bacterial epidemic outbreaks as an example of force majeure.

Takeaway:   While the Covid-19 pandemic expressly falls within the meaning of force majeure for trademark renewal deadlines, any request to renew a trademark registration beyond the expiry of the grace period for doing so can only result in a maximum 7-day extension.

Similar provisions apply to seeking an extension of time for priority claims. Such claims are often made when the Canadian application is being filed as part of a broader multinational brand protection strategy. If the Canadian application is filed within 6 months of a corresponding foreign application, if other qualifying criteria are met, the Canadian application can claim “priority” from that earlier-filed foreign application. This effectively makes the filing date of the Canadian application retroactive to the filing date of the prior foreign application. In circumstances where it is not possible to file the Canadian application within 6 months of the foreign application due to force majeure (including the current Covid-19 pandemic), the applicant can request an extension of time. Pursuant to the same Practice Notice referenced above, any extension can be granted only for a maximum of 7 days.

Takeaway:   If a Canadian trademark application is “piggybacking” on a corresponding foreign trademark application and the applicant wishes to claim priority from the earlier-filed foreign application, the Canadian application must be filed within 6 months of the prior foreign application. A failure to meet that 6 month filing deadline can be remedied upon request if the delay was due to force majeure, but any extension will only be granted for up to 7 days.

Trademark Oppositions

Please refer to this link for the most updated information: http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04766.html.

Oppositions may occur in the latter stages of the application process if a third party wishes to formally object to an application. An opposition takes the form of a contentious proceeding in which evidence is filed and submissions are made to a Hearing Officer of the Opposition Board.

Any deadlines in opposition proceedings falling between March 16th and April 30th inclusive have now been extended to May 1st due to the same “designation” procedure discussed above in the context of trademark applications. Additional dates may be designated if the circumstances warrant. This applies to deadlines set out in the Trademarks Regulations (e.g. for the filing of evidence) as well as deadlines stipulated in correspondence from the Registrar (e.g. setting a deadline for the completion of cross-examinations).

Takeaway:   Any deadlines with respect to trademark opposition proceedings falling on March 16th up to and including April 30th are now automatically extended to May 1st.

In the normal course, additional extensions of time would require the consent of the adverse party. However, CIPO has made it clear that where additional extensions are needed due to the disruption caused by Covid-19, consent will not be needed. CIPO has also indicated that a 3-month extension “will usually be appropriate” where an extension request is made within 2 months following the end of the period of designated days. If more than 3 months is desired, then more detailed reasons will need to be provided. Any extensions will generally flow from the original deadline. Thus, for example, if a deadline falls on April 15th it can be extended to July 15th despite the fact that the April 15th date would have been effectively counted as May 1st.

Takeaway:   Even if a party’s deadline falls between March 16th and April 30th and is thus deemed to be extended to May 1st, it is incumbent on the party to seek any additional extensions as soon as possible, and in any event by no later than 2 months following the end of the period of designated days (currently set to end on May 1st).

 

The trademark application and opposition processes have always been technical in their details, and this has perhaps never been more apparent than now. In addition to numerous significant statutory changes implemented last June, trademark procedure is now being impacted by Covid-19. A registered trademark agent can best guide applicants through the shifting landscape to maximize brand protection and ensure that rights are preserved.