In Canadian trademark opposition and cancellation proceedings, CIPO provides new guidance on COVID-19 related extensions of time

As we recently reported, the Canadian Trademarks Office (CIPO) has announced a further automatic extension of trademark deadlines, with deadlines originally falling between March 16 and April 30 (inclusively) now extended until May 1, 2020.

Even so, parties involved in Canadian trademark opposition and summary cancellation ("Section 45") proceedings may need additional deadline relief, particularly those undertaking complex steps such as preparing evidence or conducting cross examinations (which may not be possible due to physical distancing). CIPO recognizes this and has now explained in more detail how it will evaluate extension of time requests after the current period of deadline relief ends.   

• Deadlines in opposition and cancellation proceedings automatically extended until May 1 – As a result of the current period of deadline relief, all deadlines in opposition and cancellation proceedings falling between March 16 and April 30 have been automatically extended until May 1, 2020. (CIPO may yet extend this period of deadline relief beyond May 1, depending on the progression of the pandemic in Canada.)

However, if a deadline falling before March 16 was missed as a result of COVID-19, this missed deadline will not be corrected by the automatic extension that CIPO has granted and the party that missed the deadline will need to quickly request a retro-active extension of time, explaining why the failure to act on time was not reasonably avoidable.

• Discretionary extensions of time may also be available – For deadlines falling on May 1 (assuming the current period of deadline relief is not extended again), or shortly thereafter, it will likely be possible to obtain more time if a party is unable to meet its deadline due to COVID-19.  CIPO advises that it will consider the disruptions caused by the pandemic when deciding whether to grant such extension requests. Importantly, if the extension request is made within two months of the end of the period of deadline relief, CIPO states that a "three-month extension of time will usually be appropriate". It will not be necessary to obtain the other side's consent for such extension requests. Extension requests should detail why more time is needed as a result COVID-19 if the request is being made after the two-month window mentioned above, or if the request is for an extension of time of more than three months.  
• This includes deadlines that have already received other extensions of time – Despite the fact a party may have already obtained a standard "benchmark" extension of time for a deadline, or even a lengthy, multi-month "cooling off" period, CIPO will still consider granting a further, discretionary extension of time in light of COVID-19, as described above.  
• CIPO remains open, and parties can still advance their proceedings – It should also be noted that CIPO remains open for business, with the exception of oral hearings scheduled for April, which have been postponed. Therefore, parties with opposition and cancellation deadlines falling between now and April 30 can — and should — continue to meet their deadlines where possible.  

This is a time of uncertainty. Policy makers are having to make decisions "in real time", creating waves of evolving information for members of the legal and business communities to absorb. Your Gowling WLG professionals remain committed to helping you navigate this challenging time.

For other pandemic resources, our COVID-19 resource hub is continuously being updated with new information as it becomes available.