Proceedings before the Trademarks Opposition Board and frequently asked questions

From: Canadian Intellectual Property Office

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These frequently asked questions (FAQs) are intended to provide guidance on the Trademarks Opposition Board (TMOB) practice and interpretation of relevant legislation. However, in the event of any inconsistency between this page and the applicable legislation, the legislation must be followed. The provisions of this page are general guidelines only, are not binding in any particular case and are subject to change.

Please note that this page may be updated as CIPO's response to COVID-19 evolves.

Flexibility for clients after the end of designated days

The Registrar is committed to ensuring that parties before the TMOB are able to obtain reasonable extensions of their deadlines affected by COVID-19.

The Registrar has designated the days falling between March 16 and , pursuant to section 66 of the Trademarks Act. The effect of this is that any deadlines set in the Trademarks Act (the Act), Trademarks Regulations (the Regulations) or by the Registrar in a proceeding before the TMOB that fell between March 16 and now fall on

See subsection 66(2) of the Act and section 2 of the Regulations, which allow for extensions of periods and deadlines fixed under the Act and Regulations, including any deadlines in opposition, section 45, and objection proceedings. As the restrictions related to COVID-19 gradually ease, the designated days period will not be extended beyond

For deadlines falling on or after , the Registrar will take into account the disruption caused by COVID-19 when considering extension of time requests under section 47. If a request is made within two months following the end of the period of designated days, a three-month extension of time will usually be appropriate. The Registrar may also use her discretion under subsection 47(1) to extend deadlines on her own initiative if it is in the interests of justice to do so.

Question #1
What is the best way to correspond with the Registrar?

A: To ensure continuity of service, our online solutions are available 24/7. We encourage you to use the online services for all your transactions with CIPO.

In particular, parties before the TMOB, or their appointed agents, can use CIPO's trademarks opposition e-services to file any documents with the TMOB.

As of , for subsection 47(2) requests can now be filed online or still be filed on paper pursuant to the correspondence procedures.

Question #2
Subsection 66(1) of the Trademarks Act refers to a time period fixed under this Act being extended. Are periods of time in the Trademarks Regulations and those set in a letter from the Registrar (for example with respect to cross-examination) also extended?

A: Yes. A period of time prescribed by the Trademarks Regulations or set out in a letter from the Registrar is considered to be extended.

Question #3 – Updated August 19, 2020
When do I need to act if I have a deadline that falls on designated day?

A: CIPO remains open for business at this time and therefore if you are able to act on or before the deadline, we encourage you to do so. Parties with proceedings before the TMOB are advised not to wait until the last minute to submit time-sensitive communication.

Deadlines in opposition, section 45 and objection proceedings falling in the period of time beginning on and ending on are extended until as a result of the Registrar designating all days in this period for the purpose of subsection 66(1) of the Act.

Question #4
I have a deadline that falls shortly thereafter the end of designated days. Will I be given additional time if I am unable to act by the due date? What if the other side does not consent to the extension of time?

A:CIPO remains open for business at this time and therefore if you are able to act on or before the deadline, we encourage you to do so. For deadlines falling on or after the designated days, the Registrar will take into account the disruption caused by COVID-19 when considering extension of time requests to deadlines set under the Act, Regulations and in letters from the Registrar. If a request is made within two months following the end of the period of designated days, a three-month extension of time will usually be appropriate. For longer extensions, or subsequent extensions, parties should provide more detailed reasons supporting their request.

In the case where a deadline expired before , it is important to request a retroactive extension of time under subsection 47(2) of the Act as soon as possible to avoid expungement of a registration, deemed abandonment of an application, or deemed withdrawal of an opposition.

Consent from the other party will not be required for these extension requests. The Registrar may also use her discretion under subsection 47(1) of the Act to extend deadlines on her own initiative if it is in the interests of justice to do so.

Extensions that are granted will generally flow from the party's original deadline. For example, an extension granted for a deadline falling on , will be granted until . The Registrar will generally grant a longer extension of time so that the deadline will expire at least one month after the end of the designated days.

Question #5
Will my opposition be deemed withdrawn, my application deemed abandoned or my registration expunged due to an extension request filed before that has not yet been considered during the designated days?

A: No. All extension of time requests filed before or on March 16 have been processed.

Please see question #12 for further information on the dispatching of opposition and section 45 decisions.

Question #6 – Updated August 19, 2020
If a party (A) meets a deadline or takes an action that triggers a deadline, will the party (B) responding to that action have a due date that runs from the deadline that was met or action taken, or will the period run from the end of the designated days? For example, if an applicant filed and served its evidence on the due date of , would the opponent's period for filing and serving reply evidence expire a month from the end of the designated days?

A: The opponent's deadline to file reply evidence would expire . The Registrar, however, will consider extensions to this deadline in accordance with the answer to question #4.

Question #7 – Updated August 19, 2020
Are all opposition time periods relating to the filing or service of counter statements, evidence, statements that no evidence will be filed, cross-examination, written representations and requests for hearings extended by the designated days? Are all section 45 time periods relating to the filing or service of evidence, written representations and requests for hearings extended by the designated days? If a party does not file written representations, when is the other party's next deadline set from? For example, if an opponent's written representations were due during the designated days and it takes no action, when are the applicant's written representations due?

A: Yes. Each of these deadlines that previously fell between and now fall on .

If a party has a deadline falling between and to file its written representations and takes no action, the other party's next deadline runs from . For example, if an opponent's written representations were due and it takes no action on , the applicant has two months from to file its written representations.

Question #8 – Updated August 19, 2020
Could a party request cross-examination on and have its evidence due on the completion of cross-examination, if the two-month period to request cross-examination fell within the period of designated days? This question pertains to the two-month period after completion of an opponent's or applicant's evidence under sections 50 and 52 of the Trademarks Regulations.

A: Yes. If a party requests cross-examination and an extension of time to file its evidence on , the Registrar may grant an extension of time to file evidence until cross-examination is completed (for cases where the two-month period to make this request fell during the designated days).

Consistent with the Registrar's usual practice the length of the extension to submit and serve evidence will be four months from the completion of cross-examination, which will be reduced to two months if cross-examination is not completed.

Question #9
A party in an opposition or section 45 proceeding has already used the benchmark and cooling-off extensions of time, and requires a further extension of time due to COVID-19. Will the party be able to request a further extension of time?

A: Yes, a further extension of time may be available in accordance with the answer provided to question #4.

Question #10
My oral hearing in April was postponed by the Registrar due to COVID-19. When will it be rescheduled?

A: TMOB hearings from March 16 until April 30 have been postponed. The Registrar will set a new date to proceed via teleconference (if possible in the summer or fall) and inform the parties.

Parties are also encouraged to advise the Registrar as soon as possible if a hearing is no longer required. For cases where a hearing has been scheduled and the Registrar is advised by both parties that a hearing is no longer required, a non-hearing decision will be issued.

Question #11 – Updated August 19, 2020
What happened with oral hearings scheduled in May or June?

A: For hearings scheduled in May and June, subject to agreement and availability of the parties and the members and hearing officers, hearings were either postponed or conducted by teleconference.

It is important to note that "in person" hearing will not be scheduled before late fall or early 2021; therefore, parties are encouraged to conduct their hearing via teleconference or videoconference (e.g. Microsoft Teams).

Parties are also encouraged to advise the Registrar as soon as possible if a hearing is no longer required. For cases where a hearing has been scheduled and the Registrar is advised by both parties that a hearing is no longer required, a non-hearing decision will be issued.

Question #12
Is the Registrar issuing and sending opposition and section 45 expungement decisions to parties during the designated days? If not, when can parties expect decisions?

A: Members and hearing officers continue to prepare decisions. Decisions prepared from March 16 until May 31 have been dispatched to the parties. After June 1, 2020, decisions will be dispatched to the parties as they are issued by Members and Hearing Officers. The two-month period for appeal by parties to the Federal Court pursuant to subsection 56(1) of the Trademarks Act applies to these decisions. If the deadline to appeal a decision falls on designated or prescribed days, the deadline to appeal is extended until the end of the designated days.

Question #13
Will the Registrar be waiving fees for extensions of time based on COVID-19?

A: At this point, the Registrar has not waived fees for extensions of time based on COVID-19.

Question #14
Is the information on the Canadian Trademarks Database regarding my proceeding before the Opposition Board up to date?

A: CIPO is still open for business and continues to process correspondence, and updates to the Canadian Trademarks Database are, in principle, occurring weekly.

Question #15
I have an upcoming evidence deadline and I am unable to obtain a certified copy of a file or registration from the Registrar or have an affidavit sworn, should I file printouts from the Canadian Trademarks Database or an unsworn affidavit?

A: If you are unable to meet an evidence deadline due to COVID-19 including the obtaining of certified copies or sworn affidavits, an extension of time should be sought in accordance with question #4.

On April 27, the Canadian Intellectual Property Office's Client Service Centre resumed its intellectual property document order service. Clients should expect delays in the processing of their requests as we work to fulfill orders in the backlog.

CIPO requires that affidavits filed as evidence in opposition or section 45 proceedings be sworn. We note that some jurisdictions have modified the rules for swearing and commissioning affidavits in view of the disruption caused by the COVID-19 pandemic. CIPO will maintain its practice of accepting affidavits and statutory declarations provided they are in compliance with requirements of the jurisdiction in which they were sworn.

Question #16
What transactions can be submitted online?

A: Currently, users are able to submit online all of the main transactions related to opposition and section 45 proceedings. This includes:

Question #17
What type of transactions can be submitted through General Correspondence tab?

A: Users are able to submit the following transactions via the General Correspondence tab:

Please note that, due to possible privacy and confidentiality implications, and to protect sensitive financial information (for example, credit card numbers), no document requiring a fee payment form should be submitted through the General Correspondence tab. Accordingly, fee payment forms that will be attached to documents submitted through the General Correspondence tab for the purpose of opposition or section 45 proceedings will NOT be processed by the Registrar.

Question #18
I have experienced a technical problem while submitting a transaction online, what should I do?

A: If you have experienced any type of technical problem while submitting a transaction online, please click the "Report a Problem" link. This link will bring you to a page where you will be able to fill out a form to inform us about the type of problem(s) that you have encountered and upload screenshots for clarification.

Question #19 – Updated August 19, 2020
Will the TMOB continue to schedule hearings in the second half of 2020?

A: The hearing schedule for July until the end of October is now complete and all hearings will be conducted by teleconference. The TMOB will also continue preparing non-hearing decisions.

It is important to note that "in person" hearings will not be scheduled before late fall or early 2021. Therefore, parties that are waiting for a hearing are encouraged to inform the TMOB of their agreement to conduct their hearing via teleconference by sending an email to ised.cipohearing-opicaudience.isde@canada.ca or videoconference (e.g. Microsoft Teams).

Archived COVID-19 FAQs

Archived: Proceedings before the Trademarks Opposition Board and frequently asked questions

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