Canadian Trademarks Opposition Practice During and After the COVID-19 Crisis

The Canadian Registrar of Trademarks, Commissioner of Patents and the Minister responsible for the Industrial Designs Act have “designated” the time-period running from March 16, 2020 up to and including May 15, 2020.  Designating these days allows users of the system to treat the days as if they are holidays or weekends and effectively extend the deadline to the next business day.  Deadlines falling within the “designated” period may be met by responding on the first day that is no longer designated, or in the case of this latest extension, on May 19, 2020 which is the first day of business following a weekend and a national holiday.  This is a pragmatic and useful approach to ensure relief is available to rights holders and third parties affected by the severe acute respiratory syndrome coronavirus 2 (SARS-CoV-2) otherwise known as COVID-19.  While users of the system may defer responses to deadlines, they are not required to do so and indeed the Canadian Intellectual Property Office encourages all deadlines to be met, if possible.  If new filings are any indication of broader activity, most IP owners are continuing to use the system and meet existing deadlines.   Ignoring year on year increases, it appears the rate of filing during designated days is approximately 70% what it was at the same time last year.

Many Intellectual Property offices in countries and regions throughout the world have implemented measures to ensure rights are not lost owing to the devastating COVID-19 crisis.  However, relatively few have considered how users will be impacted as the world emerges from the pandemic and IP Offices return to normal, if a “new” normal.  The need for relief measures over the coming months is obvious.  Many of the challenges and difficulties that exist today will not be completely ameliorated when CIPO stops designating days.  This is particularly true of quasi-judicial proceedings such as Opposition and Cancellation.  It is, therefore, laudable that the Canadian Opposition Board has announced a variety of measures that will help parties involved in these proceedings during this next phase.  In clarifying practice, the Board has brought certainty to the system.  This offers a two-fold benefit to users of the system. CIPO has simplified practice and helped lower the cost of these proceedings.

The Board guidance may be seen here.

Clarification has been provided regarding the issue of which deadlines are affected by the designation of days.  The answer – all of them, with the exception of the deadline for appealing a decision of the Registrar under section 56.  While subsection 66(1) of the Canadian Trademarks Act establishes CIPO’s ability to extend any deadline falling on a designated day to the next day that is not designated, the wording referenced only time periods fixed under the Act.  However, the Board has confirmed that it interprets a time period “fixed under this Act” to include any period prescribed by the Trademarks Regulations or set out in a letter from the Registrar.  Under this interpretation, all deadlines falling between March 16, 2020 and May 18, 2020 now become due on May 19, 2020 (unless a further period of designated days is announced).  The Registrar, through the Board, has managed the issue of appeal to the Federal Court, also currently under a period of suspension until May 15, 2020, by not issuing decisions for now.

The Board has also clarified that any deadlines triggered by an action taken on a designated day run from the action and not from May 19, 2020, currently identified as the first day that will not be designated.  Therefore, if an Applicant’s deadline for filing its Rule 42 evidence became finally due on April 10, 2020 while the Applicant might of course have completed and filed that evidence by this date should it wish to do so, it could also defer and file any time on or before May 19, 2020.  Regardless of the fact that days had been designated, the clock starts running for the other party once the action has been taken.  Therefore, if the Applicant in the aforementioned example chose to proceed with filing and service of its evidence on April 15, 2020, the Opponent’s one-month deadline for filing reply evidence would expire May 15, 2020.  That Opponent would of course be entitled to defer until May 19, 2020 but given the bulk of time available to collect and file evidence took place during the COVID crisis the designated days will have not provided much relief.  Fortunately, the Board has established a procedure to address this and other similar situations.

The Opposition Board has recognized that while all deadlines falling in the period of March 16-May 18, 2020 come due on May 19, 2020 not all users of the system will be in a position to reasonably act on that day.  It was announced that the Hearing Officers will take into account the COVID disruption when considering requests for extensions of time under section 47 made within two months of the end of the period of designated days.  In those instances, a three-month extension of time will be granted.  While fees remain payable, consent of the other party is not required nor are parties required to provide substantive reasons beyond the mere existence of the crisis.

Various groups, including FICPI Canada, have encouraged CIPO to provide as much advance warning as possible as to whether the designated days will be extended beyond what is currently designated.  This is of course a difficult task to achieve given the complexity of the decision and the levels of government involved.  However, the recent announcements by the Board have provided users with a viable alternative to this early warning of resumption of non-designated days.  The solution? Parties should now find it possible to obtain routine three-month extensions of time for any deadline falling between May 19, 2020 and July 19, 2020.

These easily comprehended and easily obtained extensions of time should go a long way towards providing relief to users of the system who might be affected by the COVID-19 crisis.  The Board has also indicated when these additional extensions of time are not sufficient, Board Members will use their discretion to grant additional or longer extensions provided more detailed reasons are provided.  An example of this might be a party whose deadline for filing evidence fell on July 20, 2020 or shortly after.  The time available time available to that party for collecting evidence would have occurred in large part during the COVID-19 crisis and there could be good reasons why it was possible to complete collection of evidence on a timely basis. Yet, the Registrant would technically not be entitled to relief since its deadline would not fall between May 19th and July 19th.  However the ability of Board Members to use their discretion to grant additional extensions should help alleviate the burden on parties inordinately affected by the crisis.

As an added bonus for users, CIPO has now advised that it has updated its e-filing systems to permit users to electronically request retroactive extensions of time pursuant to subsection 47(2) of the Canadian Trademarks Act.

This article was originally published by Perley-Robertson, Hill & McDougall. To view the original post, please click here.