Maintained by Clark Wilson LLP

Further CIPO Extension to Trademark Deadlines Due to COVID-19: Until June 15, 2020

The Canadian Intellectual Property Office has yet again (the previous and fourth extension discussed here) extended its earlier automatic extensions until at least June 15, 2020. These extensions, to deal with COVID-19 disruptions, now effectively cover deadlines falling between March 16, 2020 and June 14, 2020. As CIPO has not indicated this is the last extension, further extensions are still anticipated. CIPO also indicates that it is “working to eliminate any residual delays in services that have occurred as a result of the ongoing COVID-19 outbreak”, though delays are still occurring.

As a best practice, we recommend still meeting the original deadlines for all Canadian trademark matters, where possible. Clark Wilson LLP’s trademark group remains accessible and available to assist, and is working to meet such deadlines where we have timely instructions.

CIPO’s latest announcement on these automatic extensions, first made March 17, 2020 (and last updated May 26, 2020), can be found here.

Another Extension by CIPO to Trademark Deadlines Due to COVID-19: Until June 1, 2020

For the fourth time now (the third extension discussed here), the Canadian Intellectual Property Office has extended its earlier automatic extensions until at least June 1, 2020, on account of COVID-19 disruptions. These now effectively cover deadlines falling between March 16, 2020 and May 31, 2020. It is expected that CIPO will confirm when the final such blanket extension is given and thus we anticipate a further extension as we approach the end of May.

As a best practice, we recommend still meeting the original deadlines for all Canadian trademark matters, where possible. Clark Wilson LLP’s trademark group remains accessible and available to assist, and is working to meet such deadlines where we have timely instructions.

CIPO’s latest announcement on these automatic extensions, first made March 17, 2020 (and last updated May 13, 2020), can be found here.

Third Extension by CIPO to Trademark Deadlines Due to COVID-19: Until May 19, 2020

The Canadian Intellectual Property Office has once again extended its earlier automatic extensions (previously covering deadlines falling between March 16, 2020 and April 30, 2020, as discussed here). As a result of COVID-19 disruptions, deadlines falling between March 16, 2020 and now May 15, 2020 have been extended until at least May 19, 2020 (the day after the Victoria Day long weekend in Canada).

As before, there may be further extensions announced by CIPO. While CIPO continues to experience delays in its operations, it has been working to resume most of its activities since March.

As a best practice, we recommend still meeting the original deadlines for all Canadian trademark matters, where possible. Clark Wilson LLP’s trademark group remains accessible and available to assist, and is working to meet such deadlines where we have timely instructions.

CIPO’s latest announcement on these automatic extensions, first made March 17, 2020 (and last updated April 27, 2020), can be found here.

CIPO Further Extends Trademark Deadlines until at least May 1, 2020 due to COVID-19

As noted earlier, the Canadian Intellectual Property Office had extended deadlines falling between March 16, 2020 and March 31, 2020 automatically until April 1, 2020. In light of the ongoing disruption and uncertainty due to COVID-19, CIPO has now further extended that earlier automatic extension.

All deadlines falling between March 16, 2020 and April 30, 2020 will now automatically be extended until at least May 1, 2020. Further extensions may be announced by CIPO, based on how the situation evolves in the coming weeks. CIPO has also indicated that while it remains open, significant delays should be expected for all CIPO services.

As a best practice, we recommend still meeting the original deadlines for all Canadian trademark matters, where possible. Clark Wilson LLP’s trademark group remains accessible and available to assist, and is working to meet such deadlines where we have timely instructions.

CIPO’s latest announcement on these automatic extensions, first made March 17, 2020 (and last updated March 27, 2020), can be found here.

The Utility of Recent Force Majeure Amendments to Canadian Trademark Law

In 2014 and 2015, Canada passed a number of amendments to its Trademarks Act allowing for extensions of time due to unforeseen circumstances. These amendments were driven, in part, by the Northeast Blackout of 2003, in which millions of people (including 10 million in Ontario) lost power for two or more days. As a result, some IP practitioners were unable to meet deadlines falling on those days – prompting calls for amendments allowing extensions for “force majeure” events to the Patent Act, the Trademarks Act, and the Industrial Design Act.

Although these amendments were enacted more than a decade after this blackout, these “force majeure” provisions have become incredibly relevant in the context of unprecedented challenges posed by the global COVID-19 pandemic.

The words “force majeure” do not appear in the Canadian Trademarks Act. However, at least three provisions now afford trademark owners and the Registrar of Trademarks some flexibility in addressing the effects of so-called “acts of God” under Canadian law—events beyond a party’s control which make performance of their obligations impossible. The relevant provisions:

  • allow for an extension of time to claim priority for a period of up to seven days in certain circumstances (section 34(5));
  • allow for an extension of time to pay renewal fees for a period of up to seven days in certain circumstances (section 46(5)); and
  • allow the Registrar to designate time periods in which deadlines are automatically extended to the next day outside of the time period, on account of unforeseen circumstances and when it is in the public interest to do so (section 66(2)).

This last provision came into force on November 5, 2018. Less than two years later, the Registrar exercised this power to designate March 16, 2020 to March 31, 2020 as days during which any deadline is automatically extended—in this case, to April 1, 2020. The Registrar may further extend this period, but at the time of writing we have no confirmation in this regard.

Parties wishing to rely upon the prior two provisions ought to refer to the Canadian Intellectual Property Office’s Practice Notice “Extensions of time due to force majeure for priority and renewal”, published June 17, 2019. Notably, the Practice Notice makes specific reference to “virus/bacterial epidemic outbreaks” as an example of a potential force majeure event.

CIPO Extends Trademark Deadlines until at least April 1, 2020 due to COVID-19

On account of the COVID-19 situation, the Canadian Intellectual Property Office has just announced that all deadlines falling between March 16, 2020 and March 31, 2020 will automatically be extended until at least April 1, 2020. In light of the uncertainty around the evolving situation, the period for automatic extensions may be further extended.

CIPO’s complete announcement, first made March 17, 2020 (and last updated March 19, 2020), can be found here.

There’s Something About The 17th – The Tinkering Continues With More Canadian Trademark Practice Changes

The Canadian Intellectual Property Office (“CIPO”) has published amended Practice Notices and a Guidance document on Nice Classification, Divisional Applications and Temporary Appointment of Trademark Agents. Issued January 17, 2020, these changes have immediate effect and have material implications for prosecuting trademark applications at CIPO.

Read more in this Knowledge Bytes article.