Impact of the Corona Virus (COVID-19) Pandemic on Proceedings before the Trade Mark and Design Offices

The currently unstoppable strong spread of COVID-19 and the resulting restrictions on public life, such as quarantine measures and curfews, which are imposed in EU Member States and worldwide and which are sometimes very drastic, are also increasingly impairing the ability to work and communicate. In the meantime, various IP Offices have also reacted to this. 

1. German Patent and Trade Mark Office (DPMA/GPTO):

For example, the GPTO has published a notice on its website (https://www.dpma.de/english/our_office/publications/important_notices/importantnotices2020/noticeof18march2020/index.html)stating that deadlines in all ongoing IP rights proceedings set or granted by the GPTO will automatically, i.e. without a separate notification, be extended until 4 May 2020; no decision will be taken until then because of the expiry of the deadline actually set. In addition, time limits to be set by the Office will also take into account the current situation; time limits will be as generous as the situation requires. It should be noted, however, that the automatic extension of deadlines does not apply to statutory time limits, such as opposition and appeal deadlines, priority deadlines, or payment deadlines. Thus, if, for example, an opposition is to be filed against a national German trade mark, it will not be possible to rely on an extension. However, there may be the possibility of restitutio in integrum if a deadline cannot be met.
 
In addition, due to the reduced number of staff present in the Office, the GPTO recommends to intensify use of electronic communication (via DPMAdirektPro and DPMAdirektWeb tools), in particular for the filing of applications of IP rights. Delays may occur in respect of the processing of incoming and outgoing paper mail or faxes, as well as in relation to the issuance of certificates (certificates, register extracts, priority documents, apostilles). Longer processing times should be taken into account when filing applications, and urgent applications should therefore be submitted as early as possible.

Finally, the GPTO points out that the immediate forwarding of international design applications under the Hague Agreement to the World Intellectual Property Organization (WIPO) cannot be guaranteed at present. Therefore, such applications should be filed directly with WIPO, in particular if deadlines have to be met. 

2. European Union Intellectual Property Office (EUIPO):

Also the Executive Director of EUIPO has once again made use of the possibility granted to him (under Article 157(4)(a) EUTMR in conjunction with Article 101(4) EUTMR and under Article 100 CDR in conjunction with Article 58(4) CDIR) to extend time limits in this almost worldwide crisis period: With his Decision of 16 March 2020 (No EX-20-3, available at https://euipo.europa.eu/ohimportal/en/news/-/action/view/5644669) all time limits expiring between 9 March and 30 April 2020 (inclusive) have been extended until 01 May 2020. Due to the public holiday on 1 May 2020 (Decision No EX-19-03), the extension is effectively valid until Monday, 4 May 2020.

However, in this respect – and in contrast to the situation at the GPTO - the extension refers to all time limits, i.e. not only to the time limits set by the Office in all current proceedings concerning European Union trade marks and Community designs, but also to the time limits directly resulting from the Regulations, and irrespective of whether or not they can be subject of restitutio in integrum (for details see https://euipo.europa.eu/ohimportal/en/news/-/action/view/5657728). In particular, the following statutory time limits are covered by the extension:

• Priority Periods (Articles 34 (1) and 38 (1) EUTMR; Articles 41 and 44 CDR)
• Opposition Period (Article 46 (1) EUTMR)
• Time Limits for Payments (Application and Opposition Fees, Articles 32 and 46(3) EUTMR)
• Request for Renewal (Articles 53(3) EUTMR and 13 CDR)
• Filing of an Appeal and of the Statement of Grounds, Payment of the Appeal Fee (Articles 68 (1) EUTMR and 57 CDR),
• Conversion (Article 138 EUTMR)
• Deferment of Publication of Design (Article 50 CDR). 

Oppositions to an EU trade mark application can therefore be filed within the extended period. In this respect, the EUIPO decision takes into account the classification of COVID-19 as a pandemic.

On the other hand, it should be noted that the automatic extension of time limits does not apply to time limits in proceedings before other authorities or courts, even if they result from the Regulations on the EU trade mark or on the Community design. For example, the period for bringing an action before the European Court of Justice against decisions of the Boards of Appeal (Article 72(5) EUTMR and Article 61 CDR) is not covered by the automatic extension of time limits. 

EUIPO has requested all staff to work from home. However, as the EUIPO has acted from the outset as a paperless office with exclusively electronic file management, hardly any restrictions or delays are to be expected. 

3. Other Offices

Other offices around the world have also taken similar measures, such as extending or interrupting deadlines and stopping public access to their premises. It is therefore essential to obtain up-to-date information on a daily basis from the website of the respective Offices.

We will be happy to answer any of your questions on these and other topics related to the protection of your intellectual property.

Additional, daily updated information on the corona crisis is also available on our focus page.