COVID-19: Impacts and Considerations for Your Trademarks

These troubled times have direct repercussions on all businesses, at many levels. Trademarks are also in the maelstrom.

Your trademarks constitute important assets of your business and likely some of the most stables in a crisis situation. We anticipate many of the questions you may have and summarise below some of the potential impacts we need to consider regarding your business’s trademarks.

Managing Deadlines

All deadlines for actions relating to pending applications (e.g. response to an Office Action), registrations (e.g. maintenance or renewal) and various administrative or legal proceedings have been postponed in some jurisdiction while they have not in others. For example, as of March 20, 2020:

• in Canada, all deadlines within the period spanning March 16 to 31 inclusively have been postponed to April 1st (subject to a possible further extension depending on the circumstances);
• in the European Union, all deadlines within the period spanning March 9 to April 30 inclusively have been postponed to May 4; and
• in the United States no automatic postponement of deadlines has yet been announced.

With the help of our associates in over 200 countries, we are able to assist you regarding any deadline you are facing relating to your trademark applications and registrations.

For the countries or jurisdictions that have not automatically postponed current deadlines, we can endeavour various strategies to face the music. For example:

• determine whether it is possible to request an extension of time or to benefit from a statutory grace period (either automatic or by way of request) to complete a given action;
• respond partially to any notice in order to maintain the application or registration; and
• file brief arguments to maintain the application or registration.

If you need to maintain the rights in a pending application or a trademark registration, ignoring a deadline is not an option. We need to consider all options and act as effectively as possible under the circumstances.  Subsequently invoking force majeure (e.g. acts of God) may not necessarily succeed depending upon the jurisdictions and is subject to interpretation.

Failure to Use a Trademark

The current circumstances can imply that certain business activities temporarily cease. As such, it is possible that a trademark is no longer used, entirely or with regards to certain goods or services, in a given country or jurisdiction. No panic! The temporary non-use of a trademark will not, in most cases be detrimental to your rights. If, however, this is a particular concern, we can assist you to evaluate the scope of the impact.

The Launch of a New Trademark Is Delayed

The anticipated launch of a new trademark is delayed because of the current circumstances? If this has not yet been done, it becomes very important to file trademark applications in the jurisdictions of interest in order to reserve your rights to the trademark. In Canada and in the United States for example, the mere use of a trademark grants’ rights therein. Failing use of the mark, any person who uses the mark or a similar mark or files an application before your use has begun could potentially seriously impede your future launch. Acting now to secure your business plans that may be postponed by the current situation could make the difference and avoid having to go back to the drawing board.

Outsourcing or Transfer of Operations

Although your trademark continues to be used on the market, it is possible that certain activities relating thereto are undertaken by a related company or an unrelated party. That is not a problem. However, you must ensure that your trademark is used up to your defined standards in order to preserve your rights. If it is not currently practical to define the terms by which you authorise the use of the trademark by way of a formal licence, this can be done retroactively once matters have settled down. This is also necessary if the trademark is used by an entirely held subsidiary of the trademark owner, lest the rights in the trademark be diluted. This may all seem abstract and their implementation non-urgent for the moment, but rest assured that these issues will need to be addressed and sorted out once things will have gotten back to normal when COVID-19 will be behind us.

Follow-ups With the Canadian Intellectual Property Office (CIPO)

Since the coming into force of the amendments to the Trademarks Act on June 17, 2019, CIPO is having a hard time keeping up with the pace regarding the treatment of trademark applications and registrations. The present situation only complicates things further. To do regular follow-ups with CIPO has become and will continue to be crucial to ensure the progress of various demands for which answers are required. Waiting for an eventual response can incur undue delays and difficulties. To take things in hand and being proactive is therefore the privileged course of action.

Our team is presently working from home and remains fully operational to answer all your questions or address all concerns you may have related to trademark matters and to discuss trademark protection strategy in Canada and abroad. Don’t hesitate to contact us, we are present!