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Legal Update

Jun 4, 2020

Trademark Offices Worldwide Respond to COVID-19: A Survey of Extensions, Announcements, and Status Information

By Amy A. Abeloff; John C. Heinbockel; Becki C. Lee; Stephen D. Lott; Joseph V. Myers, III; F. Richard Rimer, Jr.; and Julia K. Sutherland

Updated June 4, 2020
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Trademark offices around the world have adjusted their practices in response to the global COVID-19 pandemic. Many trademark offices extended or suspended deadlines, augmented their online services, and made other accommodations for delayed filings in an effort to ease the burden on the global trademark community. Moreover, as the crisis has continued, many trademark offices have updated their original extensions to allow even more time, and some are reopening operations.

As a service to our clients and colleagues, please find below a compilation of status information as of June 4, 2020, regarding deadline extensions and other matters from trademark offices in various jurisdictions around the world. Seyfarth will endeavor to update this information as needed on a periodic basis as additional new announcements and changes are received.

Should you have any questions about these announcements or the status of any particular trademark matter or situation, please contact us.

Updated June 4, 2020

New Updates: Algeria, Argentina, ARIPA, Bolivia, Botswana, Brazil, Canada, Chile, Dominican Republic, El Salvador, Ethiopia, European Union, Germany, Honduras, India, Indonesia, Ireland, Kenya, Laos, Mexico, OAPI, Panama, Peru, Philippines, Saudi Arabia, Sierra Leone, South Africa, South Korea, Spain, Uganda, United Kingdom, United States, and Venezuela

Please see below for details.

North America

  • Canada - Most deadlines that fall between March 16, 2020, and May 29, 2020, are extended until June 15, 2020. This period could be extended. The CIPO is open but customers are advised to expect delays. (https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04767.html)
  • Mexico - All deadlines have been extended until further notice, according to an order from Mexico City’s government setting guidelines for a safe return to the workplace for the IP office’s employees.
  • United States - Filings for deadlines that fall between March 27 and May 31, 2020, including prosecution deadlines and deadlines to oppose new applications, were considered timely if filed on or before June 1, 2020, provided that the delay in filing is due to COVID-19. Extensions of time are also available in ongoing Trademark Trial and Appeal Board proceedings for COVID-19-related delays. All face-to-face meetings, including hearings, are suspended until further notice, and the US Patent and Trademark Office has waived fees for reviving abandoned applications or canceled registrations provided that the missed deadline was a result of COVID-19. The USPTO also announced the launch of a COVID-19 resource center. (click here)

Europe

Asia Pacific

  • Australia - IP Australia is currently operating as normal. Extension requests will be reviewed on a case-by-case basis and may be granted if IP Australia determines that COVID-19 affected the ability of a trademark owner to meet a deadline. Note that some deadlines cannot be extended, however. Requests for waiver or refund of the fee for an extension of time will be considered on a case by case basis. (https://www.ipaustralia.gov.au/about-us/news-and-community/news/business-continuity-and-coronavirus-disease-covid-19-outbreak)
  • China - All deadlines may be suspended upon an evidentiary showing in locations where government prevention measures (such as stay in place orders) are in effect. The suspension period begins on the date where the stay in place order came into effect until “the date when the local place resumes work and management and control on people ends,” except in the case of renewals, which are given a two-month extension upon an evidentiary showing and in cases where filing in the grace period is not available. (http://english.sipo.gov.cn/news/officialinformation/1145981.htm)
  • Hong Kong - The Hong Kong IP Department has extended special work arrangements through April 26, 2020; deadlines falling from April 20 to April 24, 2020, were extended to April 27, 2020. As of April 24, 2020, the office announced that no more extensions will occur. (https://www.ipd.gov.hk/eng/whats_new/news.htm)
  • India - Although the IPO announced that all deadlines falling between March 15, 2020, and May 17, 2020, would be extended to June 1, 2020 (http://www.ipindia.nic.in/newsdetail.htm?681/), that announcement was challenged in court. Deadlines are therefore suspended until further notice. The online filing system is still active and can be used to complete filings.
  • Indonesia - The physical IP office has now reopened and the online system is available for new filings, responses to refusals, and opposition pleadings.
  • Japan - The Japanese Patent Office will consider extension of time requests on a case-by-case basis if circumstances related to COVID-19 affect the ability to meet a deadline. Applicants should submit a document explaining the circumstances that prevented compliance with the deadline. The JPO has established time limits on the availability of such extensions. In most cases, extensions should be requested within 14 days (and within two months for international applicants) of when it becomes possible for the applicant to take action. The office added new logistical explanations on April 30, 2020. (https://www.jpo.go.jp/e/news/koho/saigai/covid19_procedures.html)
  • Laos - The Department of Intellectual Property was deemed non-essential, and was closed from April 1 to April 20, 2020, and has now reopened. (https://dip.gov.la/?lang=en)
  • Malaysia - All trademark renewal deadlines were extended to June 1, 2020. All other deadlines falling between April 1 and May 31, 2020, pertaining to all appeals, oppositions, cancellations, and registration fees were also extended to June 1, 2020. (http://www.myipo.gov.my/wp-content/uploads/2020/04/Practice-Direction-1-2020.pdf)
  • New Zealand - The Intellectual Property Office of New Zealand is currently operating as normal but will assess extension of time requests on a case-by-case basis and grant extensions if circumstances related to COVID-19 affect the ability to meet a deadline. IPONZ may also change the due dates in certain cases on its own, including deadlines to respond to examiner’s reports or compliance reports, and to file evidence in contested proceedings. IPONZ will notify parties directly in these cases. (https://www.iponz.govt.nz/news/iponz-services-during-covid-19/)
  • Philippines - As of April 15, 2020, filings can now be made online. For deadlines falling between March 16, 2020, and April 30, 2020, submissions may be filed until June 30, 2020. Deadlines falling between May 1, 2020, and June 30, 2020, are now extended to July 30, 2020. (https://www.ipophil.gov.ph/news/advisories/)
  • Singapore - All deadlines falling between April 7, 2020, and June 4, 2020, have been extended to June 5, 2020. The office is considering extension requests on a case-by-case basis. (https://www.ipos.gov.sg/media-events/updates/ViewDetails/relief-measures-for-covid-19/)
  • South Korea - All deadlines falling between March 31, 2020, and May 30, 2020, were extended to May 31, 2020. The office has resumed normal operations. (click here)
  • Vietnam - The Intellectual Property Office of Vietnam closed its main office in Hanoi and has stopped accepting paper filings at that office. Electronic filings and filings at other regional offices are still accepted. All deadlines falling between March 30, 2020, and April 30, 2020, were automatically extended until May 30, 2020. (http://www.noip.gov.vn/en/web/english/home)

Middle East

  • Egypt - Currently operating as normal.
  • Iran - The Iranian Intellectual Property Office is continuing operations without interruption, though it has advised that it has decreased its working hours.
  • Israel - The Israeli Patent Office is prohibiting in-person visits to the office’s physical address, though online filings may still be made and physical documents may be submitted to the office’s deposit box.
  • Jordan - All legal deadlines were extended through May 23, 2020. Now that the Trademark Office has resumed operations, all publication timelines that would have taken place during lockdown will be measured from May 26, 2020, for the purposes of opposing published applications.
  • Kuwait - Deadlines that fell between March 12 and April 11, 2020, were extended to April 12, 2020. As of April 12, 2020, the Kuwait Intellectual Property Office has resumed operations.
  • Libya - The Libyan Intellectual Property Office is closed until further notice.
  • Saudi Arabia - The Saudi Arabia IP Office suspended operations as of March 16, 2020, for sixteen days. All deadlines falling after March 27, 2020, were extended to May 30, 2020. The office has now resumed operations. (https://www.saip.gov.sa)
  • Turkey - All deadlines and proceedings have been suspended until June 15, 2020. Trademark filings can be completed online where possible.
  • UAE - The Trademark Opposition division has suspended all face to face hearings, but appointed hearings will continue based on written submissions. However, no trademark-related deadlines are currently being extended.

Latin America

Africa

World Intellectual Property Office

  • Although the World Intellectual Property Office has closed its physical offices and arranged for remote work for most of its employees, it continues to operate all of its intellectual property registration systems as usual. WIPO will also continue its domain name arbitration services. (https://www.wipo.int/portal/en/news/2020/article_0015.html)