COVID-19 Trademarks Update Part II: Further extended deadlines and (continue to) expect delays

COVID-19 Trademarks Update Part II: Further extended deadlines and (continue to) expect delays

Robert Maratta
Posted July 6, 2020 Category: Businesses
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As an update to our April 3 blog on trademark service with the Canadian Intellectual Property Office (“CIPO”), there have been further extensions of time as well as a resumption of the document dissemination service. Specifically, the extension period under the Trademarks Act now includes the period between March 16, 2020 and July 17, 2020, extending applicable deadlines to July 20, 2020. The intellectual property document dissemination service has resumed, but CIPO has suggested that there is a backlog in requests. The online Canadian trademark filing system is still active and available, and correspondence with the office has moved, almost exclusively, to electronic.

While the extensions of time are welcome for Canadian brand owners, we have experienced a significant delay on responses from CIPO in connection with the prosecution of Canadian trademarks, longer than is normally expected. This is likely due to delays caused by COVID-19 as well as the added pressure on CIPO from the numerous applications received and dramatic policy changes implemented following the June 2019 changes in Canadian trademark law. As a result, those seeking trademarks in Canada should apply early, and expect at least a 1-3 year period before their application will progress.

On the other hand, foreign trademark offices including the United States Patent and Trademark Office and the European Intellectual Property Office appear to be operating with near-normal response times, leading to fast-tracked applications globally and stalled Canadian applications. This is one of the reasons why we suggest that Canadian companies with global brand aspirations continue to work with local experts to draft and prosecute region-specific applications alongside their Canadian applications – global filings will likely become registrations more quickly than those in Canada.

We will continue to review the CIPO status and will provide updates as new information arises.

Our team at Cunningham Swan remains available to assist with any questions you have regarding your trademarks. Please send any inquiries you have to: trademarks@cswan.com.

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Robert Maratta
Posted July 6, 2020 Category: Businesses

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