COVID-19 and IP offices

by Donvay Wegierski, Director and Janine Hollesen, Director

The pandemic has changed the way in which many of us are working which also applies to the various trade mark offices around the world including the South African registry which is closed for the lock down and is not carrying out any actions during this period.

We have been keeping an eye on the developments in the other territories in which many of our clients have trade mark portfolios and have provided a summary of the status of some of the countries below.

This document cannot be regarded as static, taking into account the evolving situation with which we are faced.

Please do not hesitate to contact us if any further information is required.

Africa

In the majority of African countries, the registries are closed and hearings have been suspended including in South Africa.

South Africa

The Companies and Intellectual Property Commission (CIPC) announced a closure of the Trade Marks, Patents and Designs Offices from 26 March 2020 to 30 April 2020.  

During this period it will not be possible to file any trade mark, design or patent applications.   Any deadlines falling within this period will automatically be extended to the next normal business day, which we expect to be 4 May 2020 due to 1 May 2020 being a national holiday.

Although the South African registries are online and new trade mark applications can be filed electronically in the normal course, the registry has decided to cease access to these databases also due to the fact that the IP e-platforms are not fully automated as in other territories.  According to communications from the registry, the South African office cannot be compared to IP offices in other territories which have the necessary infrastructure.

During this time although we are not able to access CIPC’s systems, we can access international databases to conduct trade mark searches.

Other African territories

The registries in Gambia, Morocco, Kenya and OAPI are open and online applications remain available in Nigeria and ARIPO.

OAPI covers all seventeen West African countries with no designations possible namely Benin, Burkina-Faso, Cameroon, Central African Republic, Chad, Congo (Republic of), Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal, Togo and the Union of the Comoros.   

ARIPO covers Botswana, Eswatini (formerly Swaziland), Gambia, Ghana, Kenya, Lesotho, Liberia, Malawi, Mozambique, Namibia, Rwanda, Sao Tome and Principe, Sierra Leone, Somalia, Sudan, Tanzania, Uganda, Zambia and Zimbabwe with the applicant designating the countries where protection is need.

European Union

Trade mark searches can be conducted and and applications can be filed.

Deadlines falling between 9 March 2020 and 30 April 2020 have been extended to 1 May 2020.  As the EUIPO is closed on 1 May 2020, the time limit is extened to 4 May 2020.

The European Union Trade Mark registration covers all members of the European Union, namely Austria, Belgium, Croatia, Bulgaria, Denmark, Finland, France, Germany, Greece, Ireland, Italy, Luxembourg, Netherlands, Portugal, Romania, Spain, Sweden, Cyprus, the Czech Republic, Estonia, Hungary, Latvia, Lithuania, Malta, Poland, Slovakia and Slovenia. 

United Kingdom

As of 24 March 2020 all deadlines are extended until further notice is given by the United Kingdom Intellectual Property Office.  

Trade mark searches can be carried out and applications can be filed.

United States

The United States Patent and Trade Marks Office is fully operational and all deadlines apply. 

Canada

The office has suspended all due dates until 1 May 2020.  Notwithstanding, the Canadian trade mark office has to date been operating and meeting dates as usual.

Australia and New Zealand

The Australian and New Zealand registries are fully operational and the respective trademark offices of each country are not automatically extending any deadlines.  

Any extensions of time which are needed will be considered favourably if the circumstances are due to Covid-19.  

Australia imposes an official fee of AUD100 per month for extensions and there are no official fees for extensions of time in New Zealand.

Asian Territories

The Chinese trade mark office is fully operational.

The majority of the Asian territories are accepting electronic applications and payments including Singapore, Malaysia, Philippines, Indonesia, Vietnam, Thailand, Laos, Cambodia, Myanmar and India.

In some cases deadlines have been extended but in many of territories the position remains unchanged.

For further information contact Donvay Wegierski on dwegierski@werksmans.com or Janine Hollesen on jhollesen@werksmans.com.