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Frequently asked questions – Resumed service after COVID-19 interruptions - Proceedings before the Trademarks Opposition Board

From: Canadian Intellectual Property Office

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These frequently asked questions (FAQs) are intended to provide guidance on the Trademarks Opposition Board (TMOB) practice and interpretation of relevant legislation. However, in the event of any inconsistency between this page and the applicable legislation, the legislation must be followed. The provisions of this page are general guidelines only, are not binding in any particular case and are subject to change.

Please note that this page is updated as CIPO's response to COVID-19 evolves.

Flexibility for clients after the end of designated days

The Registrar recognizes that COVID-19 impacted parties before the TMOB and/or their appointed agent, and has been committed since the beginning of the pandemic to ensuring that they remain able to obtain reasonable extensions of their deadlines affected by COVID-19. Given the amount of time that has elapsed since COVID-19 disruptions begun and the ease of restrictions across Canada and in most countries, the Registrar will be phasing out in the coming months the special temporary regime for the granting of extensions of time related to COVID-19, introduced in March 2020 to meet the needs of the parties before the TMOB and/or their appointed agent.

Question #1
What is the best way to correspond with the Registrar?

A:Filing online remains the fastest and easiest way to correspond with the Registrar. Parties before the TMOB, or their appointed agents, are strongly encouraged to use the TMOB's E-services to file any documents whenever possible, in order to ensure for their timely receipt and processing. Our online solutions are available 24/7.

Question #2
If the COVID-19 pandemic affects my ability to act by a deadline, will I be given additional time?

A:If you are able to act on or before the deadline, we encourage you to do so. If the COVID-19 pandemic is preventing or interfering with your ability to act by a deadline, you can request an extension of time under section 47 of the Act, for a period of up to three months. When seeking an extension of time based on circumstances related to COVID-19, your request to the Registrar will need to set out the following information:

The Registrar may also use his discretion under subsection 47(1) of the Act to extend deadlines on his own initiative if it is in the interests of justice to do so.

Question #3
What if the other side does not consent to the extension of time? Can I still request an extension of time? What do I need to include in my extension request?

A:If the other party does not consent to the extension of time, your request to the Registrar will need to set out the following information:

In such cases, if the Registrar is satisfied that it is in the interests of justice to do so, an extension of time of up to three months will generally be granted. The Registrar may also use his discretion under subsection 47(1) of the Act to extend deadlines on his own initiative if it is in the interests of justice to do so.

Question #4
If the COVID-19 pandemic continues to affect my ability to act by a deadline, can I request a further extension of time?

A:For subsequent request to the Registrar, you will need to demonstrate and set out sufficient reasons to warrant an additional extension of time. The Registrar will generally expect parties to take all steps they reasonably can within an extended deadline.

Subsequent extensions of time will require further reasons or an explanation of why the circumstances existing at the time of the first extension request continue to prevent a party from meeting its deadline or an evolution of the reasons stated in the first extension request. If you have the consent of the other party, please also include:

If you do not have consent of the other party, please also include:

The Registrar may also use his discretion under subsection 47(1) of the Act to extend deadlines on his own initiative if it is in the interests of justice to do so.

Question #5
What if my deadline has already expired? Is the disruption caused by COVID sufficient to obtain a retroactive extension of time pursuant to section 47(2) of the Act?

A:Section 47(2) of the Act requires that an extension only be granted if the prescribed fee is paid and the Registrar is satisfied that the failure to meet the deadline was not reasonably avoidable. Given the amount of time that has elapsed since COVID-19 began to disrupt businesses and the ease of restrictions across Canada and in most countries, the Registrar will require more detailed reasons beyond the disruption of business caused by COVID-19 in order to find that the failure to meet the deadline was not reasonably avoidable. Please also refer to questions #2, 3 and 4.

Question #6 – New!
When does the Registrar intend to stop granting extensions of time based on circumstances related to COVID-19? Will I still be able to request an extension of time on this basis after this date if COVID-19 is still affecting my ability to act by a deadline?

A:The Registrar will formally stop granting extensions of time based on circumstances related to COVID-19 on September 1st, 2021.

After this date, requests for an extension of time on this basis will be granted only if the Registrar determines that the person concerned has demonstrated exceptional circumstances beyond their control justifying the extension of time, as per section X.3.3 of the Practice in trademark opposition proceedings or section VIII.2.2 of the Practice in section 45 proceedings.

The Registrar may also use his discretion under subsection 47(1) of the Act to extend deadlines on his own initiative if it is in the interests of justice to do so.

Question #7
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.

Archived COVID-19 FAQs

Archived: Proceedings before the Trademarks Opposition Board and frequently asked questions

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