Despite current period of COVID-19-related deadline relief, don’t delay new trademark filings (especially via Madrid)

24 March 2020

The Canadian Trademarks Office (CIPO) has announced that trademark deadlines falling between March 16 and May 18 are automatically extended to May 19, 2020 (with the possibility of further automatic extensions to come).

This does not mean, however, that IP business is on hold until then. CIPO remains open and it is as important as ever to have new trademark applications filed expeditiously. Timing will be especially important for new international (Madrid) applications filed through CIPO; during this turbulent time, prudent brand owners and their counsel will want to ensure that their international applications are carefully managed.



New national (domestic) applications in Canada

Timely filing still important - Brand owners always have an interest in filing trademark applications as soon as reasonably possible, to obtain early filing dates. During the current period of deadline relief, new applications will continue to be granted filing dates. Therefore, the best practice of filing sooner rather than later (to avoid being blocked by conflicting third-party applications with earlier filing dates) applies as much now as ever.

What about priority deadlines? - For trademarks currently in their priority periods (based on an earlier filing for the same mark in another country), brand owners should continue to file their Canadian (national) applications as soon as reasonably possible, and within the original priority deadline if they are able. However, if this is not possible due to COVID-19, CIPO's deadline relief announcement means that, when filing nationally in Canada, priority filing deadlines falling between March 16 and May 18 will be extended until May 19, 2020 (subject to any further automatic extensions that CIPO may grant).

Force majeure extensions of time when filing nationally in Canada - Brand owners and their counsel should also note that for priority filing deadlines falling after the current period of deadline relief, it may still be possible to salvage a missed priority deadline if the applicant's failure to file its Canadian (national) application on time was not reasonably avoidable; in the event of force majeure ("act of God"), an applicant can request a retroactive extension of time under Section 47 of the Trademarks Act, and CIPO recognizes outbreaks of disease as possible force majeure events. Time will still be of the essence, however, as the maximum possible extension of time is seven (7) days.

New international (Madrid) applications filed through CIPO

All Madrid applicants should exercise reasonable caution - When a brand owner wishing to protect its trademark in multiple countries files an international (Madrid) application through CIPO, this triggers a two-month window for CIPO to process (certify) the application and forward it to the World Intellectual Property Organization (WIPO). Provided the application is forwarded within this window, the date of international registration will normally be deemed to be the date on which the international application was filed through CIPO. (For the same reasons discussed above, the earlier the international registration date, the better.) However, if WIPO receives the application outside of this two-month window, then the date of international registration date will be later (usually the date on which WIPO actually received the application).

In recent months, CIPO has been processing international applications submitted through the online filing system very quickly (within a couple of days). However, problems in the international application can lead to "pre-certification irregularities" that have to be addressed, and this can delay forwarding of the application to WIPO. This is a concern now more than ever, because CIPO has warned that COVID-19 may result in "significant delays in all CIPO services". The following best practices will help those filing international applications during this difficult time:

  • Prepare carefully & monitor. First, new international applications should be prepared carefully (to minimize the chances of receiving a "pre-certification irregularity"), and then monitored closely after filing (to try and guard against glitches resulting in administrative delays). Either of these events could hinder CIPO's efforts to certify and forward the international application within the two-month window, and the risk of this occurring is amplified by COVID-19.
  • File early in the priority period when possible. Second, for trademarks in their priority periods due to an earlier-filed national/domestic application (usually the underlying (basic) Canadian application), it will be prudent to file the international applications for these marks early in their priority periods when possible. This is because, to successfully claim priority, the international registration date must fall within the priority period, and COVID-19 increases the risk of a glitch thwarting this. Consider the following scenario:

(1) Basic (national/domestic) Canadian application filed on March 1 (priority filing deadline: September 1); (2) Madrid application filed through CIPO early in the priority period, on April 1 (WIPO receipt due within two months: June 1); (3) irregularities combined with COVID-19-related delays prevent the international application from being forwarded to WIPO until July 1 (after the two-month window ending on June 1), resulting in an international registration date of July 1 (instead of April 1, which would have otherwise been the international registration date).

In this scenario, the applicant's priority claim of March 1 would be preserved despite the delays, because the international registration date (July 1) is still before the priority filing deadline (September 1). By contrast, had the applicant filed the Madrid application at the end of the priority period (say, August 1) and the same delays resulted in a later than normal international registration date (say, November 1 instead of August 1), in that case the priority claim would be lost - and this is unaffected by the deadline relief that CIPO has granted in Canada.

Be especially careful when filing by means other than the online system - The risk of a lost priority claim is greatest for international applications that are not filed through the online system. Although not widely known, there is at least one circumstance in which it is not currently possible to file an international application through CIPO using the online system: for technical reasons, the online system cannot currently accommodate international applications where: (i) the applicant is a legal entity; and (ii) the applicant claims entitlement to file based on Canadian nationality or domicile in Canada. CIPO has been willing to accept such applications by fax (if submitted on the Madrid system's official paper forms). However, given the potential for COVID-19-related delays, there is now a serious risk that CIPO will not be able to certify and forward to WIPO applications filed by fax within the two-month window. Therefore, such applications will need to be monitored and managed carefully, to the extent possible. And where the mark is in its priority period, the international application should be filed as early in the priority period as possible.

***

The COVID-19 pandemic will bring competing demands on brand owners' time, and there will inevitably be a temptation to push certain tasks back. The key takeaway of this bulletin should be that, even during this time of disruption, the timely filing of new applications will remain important for securing brand owners' trademark rights. Your Gowling WLG IP team remains fully available to help you achieve this.

Please contact your Gowling WLG professional with any questions. Our COVID-19 resource hub is also being continuously updated with new information as it becomes available.


NOT LEGAL ADVICE. Information made available on this website in any form is for information purposes only. It is not, and should not be taken as, legal advice. You should not rely on, or take or fail to take any action based upon this information. Never disregard professional legal advice or delay in seeking legal advice because of something you have read on this website. Gowling WLG professionals will be pleased to discuss resolutions to specific legal concerns you may have.