Proceedings before the Trademarks Opposition Board and frequently asked questions

A: Our online solutions are available 24/7. Parties before the TMOB, or their appointed agents, are strongly encouraged to use CIPO's trademarks opposition e-services to file any documents with the TMOB to avoid delays.

Please note that since April 20, 2020, requests under subsection 47(2) of the Act can be filed online. It is still also possible to submit these requests in hard copy pursuant to the correspondence procedures.

A: If you are able to act on or before the deadline, we encourage you to do so. If the COVID-19 pandemic is preventing or interfering with your ability to act by a deadline, you can request an extension of time under section 47 of the Act, for a period between three to six months. The Registrar will take into account the disruption caused by COVID-19 when considering extension of time requests.

When seeking an extension of time based on exceptional circumstances related to COVID-19, your request to the Registrar will need to set out the following information:

• Detailed reasons explaining why it is not yet possible for you to act by the deadline;
• Statement to the effect that the other party has consented to this extension request; and,
• The number of months, between three to six months, agreed to by both parties for the extension.

The Registrar may also use his discretion under subsection 47(1) of the Act to extend deadlines on his own initiative if it is in the interests of justice to do so.

TMOB will review this approach on a quarterly basis.

A: If the other party does not consent to the extension of time, your request to the Registrar will need to set out the following information:

• Detailed reasons explaining why it is not yet possible for you to act by the deadline;
• Sufficient details as to the steps you have taken so far and will take in the next months to meet your deadline; and,
• Submissions as to why you will suffer prejudice if the deadline is not extended.

In such cases, the Registrar will generally grant an extension of time between three to six months.

The Registrar may also use his discretion under subsection 47(1) of the Act to extend deadlines on his own initiative if it is in the interests of justice to do so.

TMOB will review this approach on a quarterly basis.

A: For subsequent request to the Registrar, you will need to demonstrate and set out sufficient reasons to warrant an additional extension of time. The Registrar will generally expect parties to take all steps they reasonably can within an extended deadline.

Subsequent extensions of time will require further reasons or an explanation of why the circumstances existing at the time of the first extension request continue to prevent a party from meeting its deadline or an evolution of the reasons stated in the first extension request.

If you have the consent of the other party, please also include:

• Statement to the effect that the other party has consented to this additional extension request; and,
• The number of months, between three and six months, agreed to by both parties for the additional extension.

If you do not have consent of the other party, please also include:

• Sufficient details as to the steps you have taken so far and will take in the next months to meet your deadline; and,
• Submissions as to why you will suffer prejudice if the deadline is not extended.

The Registrar may also use his discretion under subsection 47(1) of the Act to extend deadlines on his own initiative if it is in the interests of justice to do so.

TMOB will review this approach on a quarterly basis.

A: Section 47(2) of the Act requires that an extension only be granted if the prescribed fee is paid and the Registrar is satisfied that the failure to meet the deadline was not reasonably avoidable. Given the amount of time that has elapsed since COVID-19 began to disrupt businesses, the Registrar will require more detailed reasons beyond the disruption of business caused by COVID-19 in order to find that the failure to meet the deadline was not reasonably avoidable. Please also refer to questions #2, 3 and 4.

A: TMOB has updated its practice notice as it relates to cross-examination and considers videoconference to be the preferred method of cross-examination.

While agreement on the preferred method of cross-examination should be sought between the parties, in the absence of agreement, the Registrar will order that cross-examination take place by videoconference unless the balance of convenience does not favour this method. This update to the practice notice has no effect on previous rulings issued by the Registrar, however, all new, pending or reconsideration requests will be examined in light of this update. Please consult Section VII of the TMOB practice notice for additional details.

Given that the preferred method of cross-examination is by videoconference the benchmark extension of time has been reduced to two months (previously four months). Furthermore, extension of time beyond the benchmark extension, to allow for the scheduling of in-person cross-examination after travel restrictions ease, will no longer be considered an exceptional circumstance.

A: Yes, teleconference and videoconference hearings conducted using third-party virtual meeting platforms are being scheduled. The hearing calendar is available online approximately 90 days in advance.

At this point in time, the TMOB does not plan to schedule or conduct hearings in person before Spring 2021. TMOB will continue to schedule hearings via teleconference and videoconference for the foreseeable future (this approach will be reviewed on a quarterly basis). Therefore, parties that are waiting for a hearing are encouraged to inform the TMOB of their agreement to conduct their hearing via teleconference or videoconference by sending an email to ised.cipohearing-opicaudience.isde@canada.ca.

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 both parties advise the Registrar that a hearing is no longer required, a non-hearing decision will be issued.

A: Hearings requiring simultaneous translation will be held by videoconference using third-party virtual meeting platforms. Detailed instructions will be made available to the participants.

A: In the first few minutes of the hearing, the Member or Hearing Officer will canvass participants for their email addresses and telephone numbers where they can be reached for the duration of the hearing. If there are technical issues during the course of the hearing, the Member or Hearing Officer will contact each participant by email and/or telephone to indicate how the hearing will proceed (for example, after a short adjournment or using the telephone number provided for audio only).

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

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

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 questions #2, 3 and 4.

On April 27, the Canadian Intellectual Property Office's Client Service Centre resumed its intellectual property document order service.

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.

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

• Statement of Opposition
  • Statement of Opposition – Extension of Time pursuant to section 47(1) of the Trademarks Act
  • Statement of Opposition – Retroactive Extension of Time 47(2) of the Trademarks Act *NEW as of April 20, 2020*
  • Upload of the party's own statement of opposition for domestic applications * NEW as of April 20, 2020*
• Notice under section 45 of the Trademarks Act
• Counter statement
  • Counter statement – Extension of time pursuant to section 47(1) of the Trademarks Act
  • Counter statement – Retroactive extension of time pursuant to section 47(2) of the Trademarks Act * NEW as of April 20, 2020*
• Evidence (Opposition and expungement proceedings)
  • Evidence – Extension of time pursuant to section 47(1) of the Trademarks Act
  • Evidence – Retroactive extension of time pursuant to section 47(2) of the Trademarks Act * NEW as of April 20, 2020*
• Written Representations (Opposition and expungement proceedings)
  • Written Representations – Extension of time pursuant to section 47(1) of the Trademarks Act
  • Written Representations – Retroactive extension of time pursuant to section 47(2) of the Trademarks Act * NEW as of April 20, 2020*
• Hearing Requests (Opposition and expungement proceedings)
• Appointment of a trademark agent (Opposition and expungement proceedings) * NEW as of April 20, 2020*

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

• General inquiries and requests
• Leave request to amend a statement of opposition
• Leave request to amend a counter statement
• Leave request to submit additional evidence
• Request for a cross-examination order accompanied by a request for an extension of time to submit evidence. For this transaction, users are requested to follow the following steps:
  • Proceed with your request for a cross-examination order. Please indicate in the text field that the request for an extension of time to submit your evidence has been filed online separately.
  • Once you have submitted your request for the cross-examination order, proceed with the submission of your request for an extension of time to submit your evidence. Please indicate in the text field that this extension of time is to submit your evidence upon completion of the cross-examination order, and that the request for the cross-examination order has been filed online separately.
  • Do not worry if the deadline that you have selected when you requested the extension of time is wrong. The Board will ensure that the date is adjusted once the cross-examination order is completed.
• Request for a cross-examination order that is not accompanied by a request for an extension of time to submit evidence. For this transaction, users can simply proceed with the request for a cross-examination order.
• Cross-examination transcript
• Cross-examination undertakings
• Request for an interlocutory ruling

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.

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.