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.

Trademark Interlocutory Injunctions: A POWERful Tool—When Available

As Canadian trademark practitioners know, historically it has generally been difficult to obtain interlocutory (or interim) injunctions in trademark infringement matters. This has been particularly so due to the difficulty in showing irreparable harm, if the injunction were not granted.

As the recent decision of the Alberta Court of Queen’s Bench in Corus Radio Inc. v. Harvard Broadcasting Inc., 2019 ABQB 880 shows, there may be some novel ways to argue irreparable harm, including what is essentially a consideration of ‘lost opportunity’. In this case, a trademark owner was able to convince the Court to enjoin use of similar marks by another party, notwithstanding some 15 years’ absence of use by the owner in the relevant marketplace.

Read more in this Knowledge Bytes article.

Trademark, copyright, or both?

In her article (read here), our colleague Caroline Camp reviews the recent Trademark Opposition Board (the “Board”) case of Pablo Enterprise pte. Ltd. v Hai Lun Tang, 2019 TMOB 54. As Caroline discusses, this case serves as an important reminder that trademark and copyright protection can and do overlap. Moreover, the case confirms that the Board has jurisdiction to assess certain copyright claims within the context of a trademark opposition. Accordingly, if an applicant attempts to register a trademark which includes design elements that are already subject to third party copyright protection (registered or not), the copyright owner may oppose registration on grounds that the applicant is not entitled to use the mark because such use constitutes copyright infringement.

Canadian Trademark eFiling Systems Outage from June 13 to 17, 2019 – What you need to be aware of

The Canadian Intellectual Property Office will be taking its efiling systems for trademarks down from Thursday, June 13, 2019, at 00:00 EDT to Monday, June 17, 2019, at 06:00 EDT, for system upgrades and enhancements.

How does this affect Applicants and owners of  trademark Registrations in Canada?  Among other things, this outage will affect:
• e-Filing of new Trademark Applications;
• Registration of pending Applications; and
• Renewal of existing Registrations

Long awaited and significant changes to Canadian Trademark law – many of which have been previously discussed in this Blog – don’t come into force until June 17, 2019 (the CIF Date).  However, with the above systems outage, anyone hoping to file a new application or to renew an existing registration – with the intent of doing so under the current, lower pricing that is not tied to the number of Nice classes of goods/services covered – will need to do so prior to midnight (EDT) on June 12, 2019.  The same time limit applies to anyone hoping to finalize registration of an allowed application with the intent of obtaining a 15 year term, rather than the 10 year term available for registrations that issue after the CIF Date.

Please contact the author for more information or advice on the above.

No Hotel in Canada? No Problem – Trademark Owner Maintains Trademark Registration With Hotel Services

The Federal Court of Canada (the “Court”) recently released its decision in Hilton Worldwide Holdings LLP v Miller Thomson, 2018 FC 895. In the decision underlying this appeal, the Registrar expunged the Canadian trademark registration for WALDORF-ASTORIA, owned Hilton Worldwide Holdings LLP (“Hilton”), on the basis of non-use. The Court allowed the appeal, and found that Hilton had proven the requisite use of its trademark in Canada, notwithstanding the fact that it did not operate a physical hotel in Canada.

Under the Canadian Trade-marks Act (the “Act”) a trademark is deemed to be used in association with services if it is “used or displayed in the performance or advertising of those services.” Courts have found that this statutory provision includes a condition that the services themselves must be performed or delivered inside Canada, and the mere advertisement of services in Canada does not constitute use within the meaning of the Act.

For trademarks associated with hotels, the Registrar has interpreted this condition restrictively. The Registrar has issued a number of recent decisions which found that the operation of a “bricks and mortar” hotel in Canada is necessary to establish the use of a trademark for “hotel” or “hotel services” in Canada (see, for instance, Bellagio Limousines v Mirage Resorts Inc, 2012 TMOB 220; Stikeman Elliot LLP v Millennium & Copthorne International Limited, 2017 TMOB 34; and Ridout & Maybee LLP v Sfera 39-E Corp, 2017 TMOB 149).

In contrast to the Registrar’s decisions involving “hotel services”, the Court has increasingly recognized circumstances in which companies operating outside of Canada can establish use of their trademarks in association with services directed to consumers in Canada. In HomeAway.com v Hrdlicka, 2012 FC 1467, the Court held that the appearance of a trademark on a computer screen via a website accessed in Canada, regardless of where the information may have originated from or is stored, constitutes use and advertising of the mark in Canada. The evidence in HomeAway.com also showed that people in Canada used the service at issue to post available rental properties located in Canada, and that these postings were available online to customers in Canada.

In allowing the appeal brought by Hilton, the Court focused on the ordinary understanding of the term “hotel services”, which would include ancillary services, such as reservation and booking services. Because these ancillary services would be included in “hotel services”, the Court found the Registrar erred in equating these services with “the operation of a hotel” – services which can only be performed at a physical hotel location. The ancillary services, in contrast, go beyond the physical “bricks and mortar” hotel, and the evidence showed that Hilton had performed such services in Canada, despite operating a physical hotel in another country.

Moreover, the type of hotel services which can be delivered online had greatly expanded since Hilton’s registration issued. The scope of the registration, according to the Court, must be considered in light of the development in online commerce as it relates to the ordinary commercial understanding of “hotel services.” Technological developments which occurred post-registration meant that Hilton could provide services online to Canadians who benefited from them. This also supported Hilton’s claim that it used the mark in Canada.

The decision forms part of a growing trend of Canadian trademark decisions which recognize that companies based entirely outside of Canada can offer services in Canada, and that the performance of those services will constitute use in Canada of the trademarks associated with such services.

David Bowden