Lessons from a pandemic: long-term impacts on Canadian trademark practice

The effects of the covid-19 pandemic have been widely felt by businesses and the legal profession worldwide. During this time, the Canadian Trademarks O?ce (TMO) and the Federal Court of Canada (FCC) took concrete steps to mitigate the effects of the pandemic that have permanently changed trademark practice in Canada.

Changes carried out by the Canadian Intellectual Property O?ce

Expanded online offerings

Throughout the pandemic, the TMO remained open, although the regional o?ces across Canada were closed, thereby severely limiting the ability to ?le certain types of correspondence. To mitigate against the closures and reliance on postal services, the TMO encouraged use of its online trademark ?ling and prosecution services. It then updated its systems to permit the delivery of general correspondence online, including the appointment or revocation of a trademark agent, divisional applications, recordals of assignment and other title changes and extensions of time in examination.

Unsurprisingly, there have been delays in communicating with the TMO during the pandemic; however, the TMO’s remote working set-up allowed trademark practice to continue, albeit more slowly, despite the general shutdown of business in Canada. Examiners could also access more incoming correspondence online and contact applicants/agents via email in certain cases.

Telephone amendments

The TMO also instituted other initiatives to attempt to secure timely prosecution of trademarks during the pandemic. For example, the TMO expanded its list of acceptable telephone amendments to include:

• adding missing disclaimers for colour claims or the 11-point maple leaf; and
• revised application to address typographical errors, priority claims not properly linked to an amended statement of goods and services, minor misclassi?cation of goods and services and incomplete colour claims. 

Applicants or their agents were provided with 72 hours to respond to avoid the issuance of a further examiner’s report.

Extension of deadlines

The TMO also relied on its powers to “designate” days to extend all deadlines in the public interest based on unforeseen circumstances. The TMO’s designated period ran from 16 March to 31 August 2020, giving brand owners additional time to respond to examiner’s reports, pay registration or renewal fees and classify goods and services, and better manage costs. Deadlines for applications and registrations falling within the Madrid Protocol were unaffected.

Adversarial matters

Practice before the TMO in opposition and cancellation proceedings was also adjusted to address new realities. Aside from extending deadlines during the designated period, the TMO:

• suspended hearings initially;
• followed up with parties to see whether hearings could be dispensed with;
• replaced in-person hearings with telephone or video conferences; and
• withheld dispatching decisions between 16 March and 1 June 2020 to delay the onset of the window to appeal decisions to the FCC. 

These moves not only provided brand owners with more time to prepare for the proceedings, but also helped defer costs. Greater communication with the TMO in these proceedings were also permitted by email. 

Virtual reality at the FCC

The FCC adapted quickly to utilising electronic correspondence by allowing litigants to ?le and serve all documentation online without having to submit paper copies, and to request access to and receive non-con?dential court documents by email. Swearing of a?davits online where a?ants could not appear in-person was also permitted. Payment of fees was initially waived and subsequently accepted by credit card or by phone to reduce contact with cash and in-person visits to the FCC’s registry locations. Crucially, the FCC permitted hearings to be conducted by video or telephone conference where possible to keep matters moving.

Strides in practice

The TMO and FCC’s response to the pandemic not only provided a blueprint on managing trademark practice during a period of emergency, but also catalysed the adoption of electronic tools and communication and more ?exibility in practice. There is, of course, room for improvement - digitising and providing on-demand access records or email contact with the FCC’s registries and examiners at the TMO would increase e?ciency. Regardless, it appears that, like all other things, the pandemic will have a long-lasting impact on Canada’s trademark practice.

This article first appeared on WTR Daily, part of World Trademark Review, in September 2020. For further information, please go to www.worldtrademarkreview.com.

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