Proceedings before the Trademarks Opposition Board and frequently asked questions

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 April 20, 2020, for subsection 47(2) requests can now be filed online or still be filed on paper pursuant to the correspondence procedures.

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.

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 March 16, 2020 and ending on August 28, 2020 are extended until August 31, 2020 as a result of the Registrar designating all days in this period for the purpose of subsection 66(1) of the Act.

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 March 16, 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 July 15, will be granted until October 15. 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.

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.

A: The opponent's deadline to file reply evidence would expire September 10, 2020. The Registrar, however, will consider extensions to this deadline in accordance with the answer to question #4.

A: Yes. Each of these deadlines that previously fell between March 16 and August 28, 2020 now fall on August 31, 2020.

If a party has a deadline falling between March 16 and August 28, 2020 to file its written representations and takes no action, the other party's next deadline runs from August 31, 2020. For example, if an opponent's written representations were due March 16, 2020 and it takes no action on August 31, 2020, the applicant has two months from August 31, 2020 to file its written representations.

A: Yes. If a party requests cross-examination and an extension of time to file its evidence on August 31, 2020, 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.

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

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.

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.

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.

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

A: CIPO is still 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 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.

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.

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).