Frequently asked questions – COVID-19 service interruptions – Trademarks
From: Canadian Intellectual Property Office
Notice: These questions and answers were prepared in the context of the COVID-19 service interruptions, which is rapidly evolving. Questions relating to trademark prosecution are highly fact specific and cannot be answered by general questions and answers. The answers provided are only a guide and should not be considered legally binding. If there are inconsistencies between the information in these answers and the applicable legislation, the legislation must be followed. The information provided reflects CIPO's interpretation of the legislation and should not be relied upon for legal purposes or business decisions.
Q: Subsection 66(1) of the Trademarks Act refers to a time period "fixed under this Act" being extended. Are periods of time in the Trademarks Regulations also extended under subsection 66(1) of the Act?
A: Yes, a period of time prescribed by the Trademarks Regulations is considered to be a period fixed under the Act and, under section 2 of the Regulations, is extended under subsection 66(1) of the Act.
Q: Are deadlines that are not "fixed under this Act", but specified by the Registrar also extended?
A: Any date specified by the Registrar, including deadlines to respond to an Examiner's Report, is considered to be extended by section 66 of the Trademarks Act.
Q: When do I need to act if I have a deadline that falls on a designated day?
A: While CIPO remains open for business, if you are able to act on or before the deadline we encourage you to act. Applicants and their agents are advised not to wait until the last minute to submit time-sensitive communication. That being said, deadlines falling on a designated day are extended to the next day that is not a prescribed or designated day, as communicated by the Registrar on CIPO's website.
If the circumstances that led to the designation of a certain period of time continues, the Registrar may decide to extend the period of time for which days are designated, thereby further extending deadlines.
Q: I have a deadline that falls on the day after a designated period or shortly thereafter. Will I be given additional time to act if I am unable to act by the deadline?
A: While CIPO remains open for business, if you are able to act on or before the deadline we encourage you to act. If you need additional time to act you may be able to apply for an extension of time under section 47 of the Trademarks Act. Note that some deadlines cannot be extended under section 47 (for example, subsection 33(2) of the Act).
Q: If the COVID-19 pandemic affects my ability to respond to an Office action before the due date (normal or extended), can I apply for an extension of time?
A: It is the practice of the Office to grant an applicant an extension of time to respond to an Office action where the applicant demonstrates exceptional circumstances justifying why it is not yet possible to file a proper response. As outlined in the practice notice entitled "Extensions of time in Examination and to respond to a section 44.1 notice", 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.
Q: If the COVID-19 pandemic affects my ability to file an application for registration having a claim to priority or to renew a registered trademark, am I able to apply for an extension of time?
A: Yes. If the COVID-19 pandemic affected your ability to act within a prescribed period, the Registrar would generally accept such a request. Under subsections 34(5) and 46(5) of the Trademarks Act, you may apply for an extension of time to file an application referred to in paragraph 34(1)(a) of the Trademarks Act or renew a registration under section 46 of the Act.
You can only apply for such an extension of time after the period of time extended under section 66 of the Act has passed. You must pay the prescribed fee (see section 14 of the Trademarks Regulations and item 1 of its Schedule) as well as explain the reason(s) why you could not do the act within the prescribed period. Evidence that the event has occurred is not required so long as the event was clearly described in the request. If the Registrar grants the extension of time, the period may only be extended by a maximum of seven days.
For further information, please refer to the practice notice entitled "Extensions of time due to force majeure for priority and renewal".
Q: How are extensions of time limits under section 66 of the Trademarks Act affecting Protocol Applications and Applications for International Registration?
A: Section 66 of the Trademarks Act applies to the periods fixed by Part II of the Trademarks Regulations in subsections 117(2) and (3) as well as sections 125 and 147. For all other periods fixed by Part II of the Trademarks Regulations, Rule 4(4) of the Regulations under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks applies.
Accordingly, the prescribed days and designated days do not apply to the time period within which CIPO must communicate to the International Bureau certain notifications (i.e. Notification of Total Provisional Refusal, a Statement of Grant of Protection, or a Notification of Refusal of a Correction). Those periods are extended only when CIPO is closed to the public for all or part of the day or when the International Bureau is closed.
In addition to the above, if the COVID-19 pandemic affected your ability to file your application for international registration based on a priority claim within the prescribed six-month period, according to the notice published by WIPO, you may be excused in the circumstances provided for by Rule 5 of the Regulations under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.
Q: What means of communication are available to applicants and registered owners and their agents at this time?
A: Because this is a rapidly evolving situation, please consult the Notices section of the CIPO website for the latest information.
Q: Is the Office of the Registrar of Trademarks receiving documents and payments during designated days associated with COVID-19?
A: The intake process is operational and CIPO is receiving documents related to trademark applications. We will accept and date-stamp all documents and payments received by CIPO. However, clients should expect significant delays in all CIPO services.
Q: Will I be able to see documents received by the Office?
A: For trademark applications, documents received by the Office are not available online. Nevertheless, the Canadian Trademarks Database remains available online and provides bibliographical data pertaining to applications and registrations that have been made available to the public.
Should you wish to consult documents pertaining to an application or registration made available to the public, we invite you to contact the Client Service Centre or to order copies of documents online.
Q: Will the Office of the Registrar of Trademarks tell me if the filing requirements for my trademark application are met?
A: Yes, but you should expect significant delays in all CIPO services
Q: Will I receive correspondence from the Office?
A: CIPO is still issuing correspondence; however, clients should expect delays as CIPO re‑adjusts operational processes.
Q: Is examination continuing?
A: Yes, examination will continue; however, clients should expect delays.
Q: Will the Office of the Registrar of Trademarks continue to issue certificates of registration and renewal?
A: Yes, but clients should expect significant delays in all CIPO services. Note that clients may, in most situations, use CIPO's online services to register and renew their trademarks.
Q: How long will trademark services be impacted?
A: If the circumstances that led to the designation of these days continues, the Registrar may decide to extend the period of time for which days are designated. If additional days are added, the office will re-evaluate the situation and its response.
Question #16 – Updated May 26, 2020
Q: Is the time limit to pay fees also extended until June 15, 2020?
A: Yes, in general, a time limit to pay a fee is considered to be a time limit that is prescribed under the Trademarks Act and as such, is extended under subsection 66(1) of the Act in relation to designated days under subsection 66(2).
A notable exception are fees payable to the International Bureau of WIPO under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks whose time limits are not extended as a result of designated days under subsection 66(2) of the Act. For additional information, see Question #7.
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