Frequently asked questions – Resuming service after COVID-19 interruptions – Trademarks

From: Canadian Intellectual Property Office

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As communicated by the Registrar on CIPO's website, the Registrar has decided not to extend the period of time for which days are designated under subsection 66(1) of the Trademarks Act due to the COVID-19 pandemic beyond . The following questions and answers were prepared in the context of ending the service interruptions by way of designating days. Questions relating to trademark prosecution are highly fact-specific and cannot all 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.

Flexibility for clients after the end of designated days

Question #1
When do I need to act if I have a deadline that fell on a designated day?

A: . Deadlines that fell 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. Therefore, deadlines falling in the period of time beginning on and ending on are extended until .

Question #2
I have a deadline that falls on , or shortly thereafter. Will I be given additional time to act if I am unable to act by the deadline?

A: If you are able to act on or before the deadline we encourage you to do so. If you need additional time, you may be able, in certain circumstances, to apply for an extension of time under section 47 of the Trademarks Act. Some deadlines cannot be extended.

When requesting a retroactive extension of time under subsection 47(2) of the Act, you must explain how your failure to do the act or apply for an extension of time by the due date was not reasonably avoidable. The prescribed fee of $125 must be submitted together with the request for the request to be considered.

Question #3
Is there a fee to request an extension of time?

A: In view of section 14 of the Trademarks Regulations, a person that applies for an extension of time under section 47 of the Trademarks Act must pay the prescribed fee of $125. This fee is only required where a person applies to extend the deadline or period of time that is fixed by the Act or prescribed by the Regulations. The fee would not be required to request an extension of time to respond to an examiner's report since the period of time to respond is not fixed in either the Act or Regulations. The fee would be required if you are in default of the prosecution of an application (refer to Question #4). The prescribed fee is not dependent on whether the extension is granted or refused.

Question #4
If the COVID-19 pandemic continues to affect my ability to respond to an Office action before the due date (normal or extended), can I apply for an extension of time before the deadline has passed?

A: In most cases, the application of an extension of time must be requested prior to the expiry of a deadline. 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.

In the case where a deadline has already passed, please refer to Question #5.

Question #5
I missed a deadline to respond to an examiner's report and have received a Notice of Default granting me a further period of two months to remedy the default. If I still need more time, can I apply for an extension of time? Is there a fee?

A: If the two month deadline noted in the Notice of Default has not expired, you may apply for an extension of time under subsection 47(1) of the Trademarks Act. 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. 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. In this situation, the applicant would need to explain how the pandemic is affecting their ability to respond together with the prescribed fee of $125 to apply for an extension of time.

If the two month deadline noted in the Default Notice has expired, you may apply for a retroactive extension of time under subsection 47(2) of the Trademarks Act. In your application for a retroactive extension of time, you must explain how the failure to do the act or apply for an extension within that time or the extended time was not reasonably avoidable. In this situation, the prescribed fee to apply for an extension of time under subsection 47(2) of the Act is $125.

Question #6
If the COVID-19 pandemic affects my ability to file an application for the registration of a trademark having a claim to priority, 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 for a retroactive extension of time. Under subsection 34(5) of the Trademarks Act you may apply for an extension of time to file a new application containing the claim to priority.

However, you can only apply for such an extension of time after the period of time extended under section 66 of the Act has passed, namely after . You must pay the prescribed fee of $125, 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 is 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".

Question #7
If the COVID-19 pandemic affects my ability 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 for a retroactive extension of time. Under subsection 46(5) of the Trademarks Act you may apply for an extension of time to renew a trademark registration.

However, you can only apply for such an extension of time after the period of time extended under section 66 of the Act has passed, namely after . You must pay the prescribed fee of $125, 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 is 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".

Question #8
I received a correspondence from the Registrar notifying me that my trademark application does not contain all the items required to receive a filing date and requiring me to submit the outstanding requirements within two months of the date of the notice. The deadline to respond to this notice fell on a designated day. When do I need to respond? Can I get an extension of time to provide the outstanding requirements due to the COVID-19 pandemic?

A: The due date to respond to this correspondence is . Under subsection 33(2) of the Trademarks Act, this two-month period to provide the Registrar with all of the filing requirements cannot be extended. As a result, if you cannot file your response before or on , you will be required to file a new application along with the prescribed filing fee since this application will be deemed never to have been filed.

Question #9 I received a correspondence from the Registrar notifying me that the goods or services of my trademark registration must be grouped according to the classes of the Nice Classification system. The deadline to respond fell on a designated day. When do I need to respond? Can I get an extension of time to provide the statement of goods or services grouped and classed due to the COVID-19 pandemic?

A: The due date to respond to this correspondence is . If the deadline noted in the correspondence has expired, you may apply for a retroactive extension of time under subsection 47(2) of the Trademarks Act. In your application for a retroactive extension of time, you must explain how the failure to do the act or apply for an extension within that time or the extended time was not reasonably avoidable. In this situation, the prescribed fee to apply for an extension of time under subsection 47(2) of the Act is $125.

Question #10
I received a correspondence from the Registrar requiring me to pay an adjusted renewal fee based on the number of Nice classes determined on the date of renewal. The deadline to respond fell on a designated day. When do I need to respond? Can I get an extension of time to pay the adjusted renewal fee due to the COVID-19 pandemic?

A: The due date to pay the adjusted renewal fee is . If the deadline has expired, you may apply for a retroactive extension of time under subsection 47(2) of the Trademarks Act.

However, you can only apply for such an extension of time after the period of time extended under section 66 of the Act has passed, namely after . You must pay the prescribed fee of $125, 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 is 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".

Question #11 Will the Registrar be waiving fees for extensions of time based on Covid-19?

A: No, the Registrar is not waiving fees for extensions of time based on Covid-19.

Maintenance of a name on the list of trademarks agents

Question #12
I was unable to meet the extended deadline of to pay the annual agent maintenance fee referred to in section 20 of the Trademarks Regulations. What can I do?

A: In order to maintain your name on the list of trademark agents, you may apply for a retroactive extension of time under subsection 47(2) of the Trademarks Act. In your application for a retroactive extension of time, you must explain how the failure to do the act or apply for an extension within that time or the extended time was not reasonably avoidable. In this situation, the prescribed fee to apply for an extension of time under subsection 47(2) of the Act is $125. Furthermore, you should provide the requirement listed under section 20 of the Regulations at the same time as your request for an extension of time to ensure timely processing of your request to maintain your name on the list.

Communicating with CIPO

Question #13
What means of communication are available to applicants and registered owners to ensure timely processing of requests for extensions of time?

A: Since , CIPO is offering a new general correspondence service which is available within the current eFiling system on the CIPO website. This service allows clients to send correspondence and fee payment on a variety of trademark topics to the Office through the website, as an alternative to facsimile or postal mail.

Clients will be able to submit, in addition to other types of correspondence, requests for extensions of time under section 47 of the Trademarks Act and the prescribed fee to the Registrar electronically via this online service.

Question #14
What means of communication are available to applicants or registered owners now that service is resuming?

A: Applicants and registered owners are strongly encouraged to use CIPO's electronic services to avoid delays.

CIPO's correspondence procedures are generally unaffected; however, some designated establishments may still be closed, thus not receiving CIPO correspondence. Please consult the Notices section of our website for the latest information in view of the rapidly evolving situation.

Question #15
What means of communication should I use to ensure timely processing of requests for extensions of time?

A: While your request may be submitted by regular mail directly to CIPO or to a designated establishment, CIPO encourages you to use electronic services by submitting a request using the new general correspondence service available within the current eFiling system on the CIPO website. The request must be addressed to the Registrar of Trademarks and must contain the name of the applicant and application number (if known).

Archived COVID-19 FAQs

Archived: Frequently asked questions – COVID-19 service interruptions – Trademarks

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