Notice: These questions and answers were prepared in the context of the COVID-19 service interruptions which are rapidly evolving. 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. CIPO and IPIC recommend you consult a registered trademark agent who can advise you on your particular situation.
The following questions were developed by CIPO's Trademark Branch, IPIC’s Trademark Committee and IPIC members and answered by CIPO. IPIC will continue updating this page as the situation evolves. If you have a question you would like answered by CIPO, please email Chelsea Berry, IPIC's Manager of Member Services, at firstname.lastname@example.org.
November 2, 2020: Amendments to certain practice notices and to the COVID-19 FAQs of the Trademarks Opposition Board
The Trademarks Opposition Board (TMOB) has amended its Practice in trademarks opposition proceedings and Practice in section 45 proceedings. These changes are part of the modernization work undertaken by TMOB to take advantage of digital technologies and adapt to the new reality.
First, TMOB now considers videoconferencing to be the preferred method of cross-examination. While agreement on the preferred method of cross-examination should be sought between the parties, in the absence of agreement, the Registrar will order that cross-examination take place by videoconference unless the balance of convenience does not favour this method. This update has no effect on previous rulings issued by the Registrar, however, all new, pending or reconsideration requests will be examined on the basis of this update. In light of this, the benchmark extension of time for cross-examinations has been reduced to two months (previously four months). Furthermore, a request for an extension of time beyond the benchmark extension, to allow for the scheduling of in-person cross-examination after travel restrictions ease, will no longer be considered an exceptional circumstance.
Second, only teleconference and videoconference hearings, conducted through third party virtual meeting platforms, are currently being scheduled by TMOB. The TMOB does not plan to schedule or conduct hearings in person before Spring 2021. In addition, parties wishing to cancel their attendance at a hearing or make changes with respect to their appearance at a hearing will now be required to notify the Registrar of such changes by email to email@example.com.
Lastly, the parameters surrounding requests for and the granting of extensions of time based on exceptional circumstances related to COVID-19 have been updated in TMOB's COVID-19 FAQs.
For a step-by-step guide to attach a response to an amended application:
Q: General - We understand that CIPO is not sending out correspondence by mail (which is understandable since we presume that CIPO’s mailroom is closed for obvious reasons). Members would prefer that CIPO find a way to get the work flow moving asap (rather than any alternative that involves holding correspondence and releasing it in a batch or over a period of time after the designated days are over). The new legislation allows for electronic communication with the Office. Can CIPO be issuing correspondence electronically?
Is correspondence being intentionally held back? If correspondence is being intentionally held back, is the plan for it to be released together in a batch resulting in a huge number of files with the same deadline?
A: Changing our current practice is unfortunately not feasible at this time given our current IT tools and their limitations. Additionally, we are not able to confirm that the email addresses in our system are all valid and provided for the purpose of outgoing correspondence and not all firms may be set up to receive correspondence in this manner. Given volumes, a change of this nature would require significant consultations with stakeholders, as well as thorough planning, to ensure a coordinated, efficient, and successful implementation.
That said, correspondence will begin issuing gradually once again during the week of March 30th, 2020 and procedures will be put in place to ensure the volume is controlled to prevent a high number of files having the same deadline.
Q: Filing receipts, renewal certificates and registration certificates- are routinely sent electronically – has this practice ceased? If so, is this only a temporary measure?
A: Internal processes that required employees on site, including filing receipts, registration and renewal certificates were suspended for a period of two weeks from March 16th to March 27th, 2020, but will gradually resume the week of March 30th, 2020.
Q: Examiner’s reports – we understand that correspondence generated by Examiners is saved to CIPO’s internal systems. Can Examiners send reports electronically? If there is a concern that reply correspondence could be lost, they could always add a paragraph along the lines of “reply correspondence will only be considered if filed using the online tool" or something.
A: Given our current work tools and their limitations, it is not possible for examiners to send email correspondence. Our systems are not able to track and permit the sending and receipt of electronic mail outside of our existing web services since they cannot properly record details surrounding the correspondence and cannot ensure that IP rights are not inadvertently lost if deadlines are not met. Lastly, the Registrar does not have the legal authority to only consider electronic correspondence through our online services.
Q: Are examiners still conducting examination at close to a regular pace (since many are accustomed to working from home)?
A: Examiners are set up to telework as this has been a long-standing practice within the branch.
While there have been some delays in having paper correspondence issue with respect to all our services during the period of March 16th to March 27th, 2020, new procedures were put in place during the week of March 30th to slowly resume some operational tasks, including the issuance of examiner correspondence. As indicated in CIPO’s official notice, while the Canadian Intellectual Property Office remains open and in operation at this time, clients should expect significant delays in all CIPO services.
Q: Can practitioners still expect examiners to return telephone calls within 24 hours?
A: To the extent that they are able, and given the current circumstances, examiners are still requested to return calls within 24 hours.
Q: Payment of registration/renewal fees – Given the current extension of statutory deadlines to April 1, is CIPO updating its records to show a e fee payment date that does not correspond to the actual earlier payment date? Applicants may not want April 1st shown as the payment date, when the fee was, in fact, paid earlier. There may be unintended consequences of incorrect data being placed on the (public) record.
A: As per the Trademarks Regulations and the Industrial Design Regulations, documents, information or fees that are submitted by physical delivery to the Office are deemed to have been received, if they are delivered when the Office is open to the public, on the day on which they are delivered to the Office; and if they are delivered when the Office is closed to the public, on the first day on which the Office is next open to the public.
Documents, information or fees that are submitted by electronic means are deemed to have been received on the day on which the Office receives them, according to the local time of the place where the Office is located.
Q: Is it still possible to order copies of documents from CIPO and to have them delivered by email (if you have a deposit account?) What about certified copies?
A: 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: In light of the COVID-19 pandemic, many professionals and firms are closing their physical offices and will be working exclusively from home. Many functions can be completed using CIPO’s e-filing services. However, there are still quite a few things that cannot be done online – eg, filing assignments, attending to recordal of name/address changes – which functions need to be done by fax, mail, or by hand delivery. These options are not feasible for most working from home.
Would it be possible for CIPO to set up a general email account to receive email correspondence for the limited functions that cannot be completed by e-filing?
A (non-opposition): Changing our current practice is unfortunately not feasible in the short term considering our current IT tools and their limitations; however, CIPO is looking into options to provide additional flexibility to applicants and we are exploring how certain types of correspondence could be sent using some form of online means.
Question 9 (multi-part question)
Q: Extension of periods fixed under “this Act”. Section 66 provides as follows -
- 66 (1) If a time period fixed under this Act for doing anything ends on a prescribed day or a day that is designated by the Registrar, that time period is extended to the next day that is not a prescribed day or a designated day.
- Power to designate day
- (2) The Registrar may, on account of unforeseen circumstances and if the Registrar is satisfied that it is in the public interest to do so, designate any day for the purposes of subsection (1). If a day is designated, the Registrar shall inform the public of that fact on the website of the Canadian Intellectual Property Office.
A. Deadlines which are not “fixed under this Act – general
The most common deadline in this category are Office Action deadlines? If these deadlines are not affected by the “pandemic deadline extension”, will CIPO accept the pandemic circumstance as exceptional and justifying a further extension (even where an extension has already been granted?
B. Opposition deadlines
For some tasks the actual date is set out in the regulations (such as the timing for filing a counterstatement) even if the Act does refer to a “prescribed time”. Does CIPO interpret reference to “prescribed time” in the Act to bring time periods referenced in the Regulations under the umbrella of “provision 66 designated days”?
A (non-opposition): Notwithstanding that certain Office Action deadlines are not prescribed, the Office will extend non-prescribed deadlines in the same manner as those that are prescribed, and as a result do not require a separate extension of time request.
A (opposition): The Registrar is committed to ensuring that parties before the TMOB are able to obtain extensions of their deadlines effected by COVID-19.
The Registrar has designated the days falling between March 16-April 30, 2020 pursuant to section 66 of the Trademarks Act. The effect of this is that any deadlines set in the Trademarks Act, Trademarks Regulations or by the Registrar in a proceeding before the TMOB that fell between March 16-April 30, 2020 now fall on May 1, 2020 (see section 66(2) of the Act and section 2 of the Regulations which allows for extensions of periods and deadlines fixed under the Act and Regulations, including any deadlines in opposition, section 45, and objection proceedings). For deadlines falling after May 1, the Registrar will consider the disruption caused by COVID-19 a sufficient circumstance to obtain an extension of time under sections 47(1) and 47(2) of the Act upon request. The Registrar may also use its discretion under section 47(1) to extend deadlines on its own initiative if it is in the interests of justice to do so.
Please continue to monitor the CIPO website as the designated days period may be further extended.
Q: Would the time frame for filing a counterstatement that would have otherwise expired today, March 22, now expire on April 1?
A (opposition): Subject to any further communications from CIPO, the period would now expire May 1. (Announcement to extend the designated days period made on Friday, March 27: https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr00050.html)
Q: The same situation applies to opposition evidence. If a party elects not to file evidence, subsection 49(3) requires that a statement to that effect to be filed within the 4 month period set under the Regulations for filing evidence. As the requirement to file a statement does not track back to the Act, is this deadline extendable?
A (opposition): Subject to any further communications from CIPO, the period would now expire May 1.
Q: If a party relies on the designation of days to extend the deadline for filing evidence but then files a statement that it does not wish to file evidence, will the statement be considered to be outside the time period for doing so?
A (opposition): No. Subject to any further communications from CIPO, the period would now expire May 1.
Q: While parties are permitted to rely on the designated days to extend due dates, some will not. If a party meets a deadline or takes an action that triggers a deadline, will the party responding to that action have a due date that runs from the deadline that was met or action taken, or will the period run from April 1? (assuming of course that the action was prescribed by the Act). For example, if an Applicant filed its evidence on the due date of March 16, when would the Opponent’s period for filing reply evidence expire?
A (opposition): The Opponent’s deadline to file evidence would start running on March 16. As the deadline now falls on a designated day (April 16), subject to any further communication from CIPO, the deadline would now be May 1.
Q: Cross-examination - Section 52 evidence, for example, is deferred if a request for cross-examination is made within 2 months from the completion of section 50 evidence. If an Opponent’s evidence was filed on January 16, 2020 with the Applicant’s evidence therefore due March 16, 2020, could an Applicant request cross-examination on April 1 and have its evidence due on the completion of cross-examination?
A (opposition): The Registrar will be permitting this.
Q: Since it is not a date in any way fixed under the Act, a Board ordered deadline for cross-examination falling between March 16, 2020 and March 31, 2020 presumably cannot be considered to be automatically extended to April 1, but please confirm.
A (opposition): Any date specified by the Registrar is considered to be extended to May 1.
Q: Written arguments – as above, since the deadline for filing Written Arguments or for requesting a Hearing are not fixed under the Act, those deadlines presumably can similarly not be considered to be automatically extended to April 1, but please confirm.
A (opposition): The prescribed times are considered to be extended to May 1.
Q: It would be useful to have a list of deadlines not automatically extended by the pandemic deadline extension AND to have some indication from CIPO (or the Opposition Board) that COVID-19 related difficulties will be considered to justify an extension with or without consent of the opposite party
A (opposition): Please refer to the answer of the first question. The CIPO Frequently Asked Questions under development we will address the second part of your question and more.