Trademarks & Designs: Corona-Update on proceedings before Trademark Offices
The corona crisis is also affecting proceedings before Trademark Offices. Below we summarize the relevant updates regarding pending deadlines for proceedings before the German Trademark and Patent Office (DPMA), the European Union Intellectual Property Office (EUIPO) and the World Intellectual Property Organization (WIPO):
Which implications has COVID-19 with regards to deadlines set by the Office in proceedings pending before the Trademark Offices (e.g. trademark and design registration proceedings, cancellation proceedings or opposition proceedings)?
German Trademark and Patent Office (DPMA): DPMA has issued a notice that informs about an automatic extension of all deadlines set by the Office in proceedings until 4 May 2020. Neither a request for an extension nor an according approval of the German PTO (DPMA) are required.
European Union Intellectual Property Office (EUIPO): EUIPO had also extended the deadlines set by EUIPO in pending proceedings until 1 May 2020 (de facto 4 May 2020). On 29 April 2020, EUIPO announced a further extension of deadlines that lapse from 1 May 2020 – 17 May 2020 and those will now lapse on 18 May 2020. The parties of the proceedings can refer to the extension automatically. No request is required for the extension. It should, however, be noted that the extended time limit will be considered exhausted if statements are made prior to the extended deadline.
World Intellectual Property Organization (WIPO): No general extension of running deadlines is applicable for WIPO proceedings. Depending on the country and deadline, an automatic extension of the current deadline based on the general provisions may be applicable. Further to that, WIPO has expressed its willingness to answer requests of parties for an extension of current deadlines benevolent. More information can be found under wipo.org.
What rule is applicable for statutory deadlines such as opposition deadlines or renewal deadlines?
German Trademark and Patent Office (DPMA): DPMA has announced that statutory deadlines remain applicable and that those deadlines are not affected by its announcement for the automatic extension of Office deadlines in pending proceedings. Statutory deadlines remain therefore in force. In case parties cannot meet those deadlines due to COVID-19, the Office pointed to according rules in German law that allow for a reinstatement. Whether a reinstatement is possible under the circumstances and if the according legal requirements are met needs to be evaluated on an individual basis. It should also be noted that German law excludes a reinstatement for certain measures, such as filing an opposition and the payment of the opposition fee is excluded (§ 91 MarkenG; § 23 Section 3, 3 DesignG, § 123 Sections 1-5, 7 PatentG).
European Union Intellectual Property Office (EUIPO): The announcements of EUIPO also cover statutory deadlines before EUIPO. Those deadlines have initially also been extended automatically until 1 May 2020 (de facto 4 May 2020). A further extension until 18 May 2020 for the deadlines that lapse from 1 May 2020 – 17 May 2020 was announced on 29 April 2020. The automatic extension comprises European Union Trademarks as well as Community Designs. It does therefore affect opposition deadlines, possible payment dates and appeal deadlines but excludes deadlines for filing an action before the European Court of Frist Instance (as such deadline is no EUIPO deadline).
World Intellectual Property Organization (WIPO): The statutory deadlines applicable for WIPO proceedings remain unchanged. Apart from this, WIPO has made clear that certain deadlines may be recovered up to 2 months after the deadline lapsed via form MM20. Further information can be gained here.
Can I still file trademark or design applications, oppositions or cancellation request before the Patent and Trademark Offices (PTOs)?
Yes, DPMA, EUIPO and WIPO have confirmed that their Offices remain open and operational. The common rules are applicable for the filing of applications and the commencement of proceedings. Given the COVID-19 measures, applicants and rights holders may currently face a delay in the answering of requests. The German PTO (DPMA) therefore asked its users to use – when possible – its online tools DPMAdirektPro or DPMAdirektWeb for the submission of documents/requests. The issuing of certificates (e.g. apostilles, register excerpts) may take longer than usually.
Where can I get regular updates regarding office proceedings and possible measures of Trademark Offices?
German Trademark and Patent Office (DPMA): The German PTO (DPMA) has set up an extra page on its website „Coronarivus (COVID-19) – continually updated information” that is available here.
European Union Intellectual Property Office (EUIPO): EUIPO has also set up a designated website that covers COVID-19 („COVID-19 Update“). The information can be found here.
World Intellectual Property Organization (WIPO): WIPO provides a subpage covering questions relating to COVID-19 („COVID-19 Update“). The page is available here.
Status: 29 April 2020