Archived — Practice Notice: Procedure Before the Trademarks Opposition Board, Publication Date: 1996-08-19

Procedure Before the Trademarks Opposition Board

Publication Date: 1996-08-19

This practice notice supersedes all practice notices previously issued in respect of Opposition Board procedures. The provisions of this practice notice are general guidelines only, are not binding in any particular case, and are subject to change.

Correspondence

In accordance with Rules 35 and 36 of the Trade-marks Regulations, all correspondence relating to an opposition proceeding should be clearly marked "Attention Opposition Board". and a copy should be sent to the other party.

Furthermore, in accordance with Rule 3(3) of the Trade-marks Regulations, correspondence in respect of an opposition proceeding may be transmitted to the Opposition Board by facsimile. The Opposition Board facsimile number is: (819) 997-5092.

Joint Opponents

  1. A statement of opposition may name any number of persons jointly as opponents.
  2. Where an extension of time to oppose is granted in the name of one person, a subsequently filed statement of opposition may name that person jointly as opponent along with any number of other persons.

Review of Statements of Opposition under ss. 38(4) and (5j)

  1. It is the responsibility of the opponent to ensure that each of its grounds of opposition is properly pleaded. The failure to do so may result in a ground of opposition not being considered: see, e.g., Massimo De Berardinis v. Decaria Hair Studio (1984), 2 C.P.R. (ad) 319.
  2. The responsibility of the Trademarks Opposition Board pursuant to ss.38(4) and (5) is only to determine if the opposition raises one substantial issue for decision and is not to ensure that all grounds are properly pleaded.
  3. If an applicant has difficulty in replying to a ground of opposition, it may wish to seek clarification from the opponent or raise an objection in its counter statement.

Extensions of Time

  1. All requests for extensions of time limits established by the Act or Regulations must be accompanied by the prescribed fee of $125.
  2. No request for an extension of time pursuant to s. 47(1) will be granted unless a reason is given to explain why additional time is needed.
  3. No request for a retroactive extension of time pursuant to s. 47(2) will be granted unless facts are set forth to justify the conclusion that the failure to do the act or apply for an extension within the time limit was not reasonably avoidable.
  4. When an initial extension of time is being requested to file a statement of opposition, the date the trademark was advertised in the Trademarks Journal should be specified.
  5. In respect of the first request for an extension of time at a particular stage of an opposition, the following standard lengths of extension will be granted: to file a statement of opposition - 3 months; to file a counter statement - 3 months; to file Rule 41(1) [formerly Rule 43] evidence - 6 months; to file Rule 42(1) [formerly Rule 44] evidence - 6 months; to file Rule 43 [formerly Rule 45] evidence - 4 months; to file awritten argument - 4 months; and to request an oral hearing - 3 months. No requests for further extensions of time will be considered unless the other party consents or exceptional circumstances are shown. It should be noted that having regard to the interests of third parties, extensions will not be granted indefinitely on the basis of consent. If a further extension is granted on the basis of consent, it will normally not be granted for a period in excess of six months.
  6. A party relying on the consent of the other party need only state that the consent has been given and is not required to file awritten consent. If, however, the other party later advises that it did not in fact give its consent, the extension of time may be revoked.
  7. When a first extension of time is granted at each stage of an opposition, the Office letter granting the extension will include a notice indicating that if a subsequent extension request is filed at that stage based on the consent of the other party, the requesting party can assume that the extension of time has been granted unless the party hears from the Opposition Board to the contrary. The letter from the requesting party will be stamped so as to indicate that the extension of time has been granted and will be placed on file. Should a party wish to do so, it may send a stamped, self-addressed post card to the Opposition Board with its request for a further extension of time which will be returned to the party to confirm the receipt of the extension of time request.
  8. The Trademarks Opposition Board will not grant a retroactive extension of time pursuant to Section 47(2) in respect of a particular stage of an opposition proceeding where the proceeding has advanced to a subsequent stage.

Sections 38(7.1) and 38(7.2) of the Trade-marks Act

In the event that a party requests, but is not granted, an extension of time to comply with Rule 41(1) or42(1) [formerly Rule 43 or 44] of the Regulations and no evidence has yet been filed by that party, then he will be advised that he has three weeks to file and serve a statement that he does not wish to submit evidence pursuant to Rule41(1) or 42(1) in order to avoid the consequences of Section 38(7.1) or 38(7.2) of the Act. The filing of such a statement does not preclude a subsequent request to file evidence pursuant to Rule 44(1) [formerly Rule 46(1)] although such a request will only be granted in appropriate circumstances.

Stay of Proceedings

Having regard to the decision of the Federal Court of Appeal in Anheuser-Busch Inc. v. Carling O'Keefe Breweries (1982), 69 C.P.R. (2d) 136, the Trademarks Opposition Board does not consider that it has jurisdiction to stay opposition proceedings.

Evidence

  1. In general, the rules of evidence which are applicable in the Federal Court are applicable in opposition proceedings. Reference may be made to G.W. Partington's article Evidence In Opposition Proceedings (1985), 2 Canadian Intellectual Property Review 54.
  2. Where parties are in agreement that a particular form of evidence should be accepted, the Trademarks Opposition Board will usually be prepared to accept it.
  3. In general, rulings on evidentiary matters will only be made at the decision stage and not during the course of an opposition proceeding.

Leave Pursuant To Rules 40 and 44(1) [formerly Rules 42 and 46(1)]

  1. Leave to amend a statement of opposition or counter statement or to file additional evidence will only be granted if the Trademarks Opposition Board is satisfied that it is in the interests of justice to do so having regard to all the surrounding circumstances including a) the stage the opposition proceeding has reached; b) why the amendment was not made or the evidence not filed earlier; c) the importance of the amendment or the evidence; and d) the prejudice which will be suffered by the other party.
  2. Requests for leave to amend a statement of opposition or counter statement should be accompanied by an amended statement of opposition or counter statement and the amendments should be clearly indicated in the covering letter.
  3. Requests for leave to file additional evidence should be accompanied by at least a draft and preferably a sworn or declared version of the affidavit or statutory declaration which is proposed to be filed.
  4. Oncewritten arguments have been requested pursuant to Rule 46(1) [formerly Rule 48(1)], no request for leave to file additional evidence will be considered unless it is specifically agreed that the affiant or declarant will be made available for cross-examination at the request of the other party.
  5. A copy of a request for leave pursuant to Rule 40 [Formerly Rule 42] or Rule 44(1) [formerly Rule 46(1)], together with a copy of the amended statement of opposition or counter statement or the affidavit or statutory declaration which is proposed to be filed, should be sent to the other party. In general, if the other party raises no objection to the request for leave, it will be granted.
  6. In general, a grant of leave under Rule 40 [formerly Rule 42] or Rule 44(1) [formerly Rule 46(1)] will have no effect on any outstanding deadlines.

Amending Applications

Any letter requesting that an application be amended should specifically identify the changes being made to the application. Ordinarily, a revised application will not be required.

cross-examination

  1. Where a request for cross-examination in respect of an affidavit or statutory declaration filed pursuant to Rule 41(1) [formerly Rule 43] is made within two months from the completion of all the Rule 41(1) evidence, and the prescribed fee for an extension of time has been submitted, the cross-examination order will specify that the applicant will have four months from the completion of the cross-examination to file its Rule 42(1) [formerly Rule 441 evidence or statement. This applies mutatis mutandis to orders for cross-examination in respect of Rule 42(1) evidence. Apart from the above, cross-examination orders will, in general, specify that they have no effect on any outstanding deadlines.
  2. The Trademarks Opposition Board will not make rulings during the course of an opposition as to whether certain questions should be answered, whether answers given are adequate, etc. Failure to answer proper questions or to fulfill undertakings may, however, result in negative inferences being drawn or in the affidavit or statutory declaration being ignored at the decision stage: see, e.g., Seagram v. Seagram (1984), 3 C.P.R. (ad) 325 at 332.
  3. It is the responsibility of the party requesting the cross-examination to ensure that the time limits established in the cross-examination order are met. If the cross-examination cannot be arranged by mutual agreement, the Trademarks Opposition Board will, on request, set up an appointment for the cross-examination normally on the following basis. Where the person to be cross-examined resides in Canada, the party requesting the cross-examination order will conduct the cross-examination proceedings at the place of the party being cross-examined. The party requesting the cross-examination will pay any expense involved in having his trademark agent present himself at the place of the affiant/declarant and bear any expense necessary with respect to the cross-exa m ination procedure including the hiring of a reporter and the preparation and delivery of a copy of the transcript to the Trademarks Office. The person being cross-examined will bear the costs of his agent and transcript. Where the person to be cross-examined resides outside of Canada and where the parties are unable to come to an agreement concerning in the affiant's/declarant's country, the affiant/declarant will be made available for cross-examination in Canada at affiant's/declarant's expense. Once the affiant/declarant is made available in Canada, the costs associated with the cross-examination shall be handled in the same manner as described above with respect to cross-examination of a person resident in Canada. Failure to attend at a cross-examination scheduled by the Trademarks Opposition Board may result in the affidavit or statutory declaration being deemed not to be part of th e evidence pursuant to Rule 44(5) |formerly Rule 46(5)1 of the Trade-marks Regulations. If the other party delays in fulfilling undertakings, the Trademarks Opposition Board will, on request, set a deadline for the fulfillment of undertakings.

Oral Hearings

Due to delays in mail reaching the Opposition Board, the parties should telephone the Board to advise of any postponement or cancellation of an oral hearing.

Parties relying upon unreported decisions of the Board should copy the other party with such decisions at least one day prior to the date of the oral hearing.

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