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Appeals of the Registrar’s Decisions: Service and Filing of Documents, Stays and Judgments

From: Canadian Intellectual Property Office

Publication date: January 23, 2008

Amendment dates: June 17, 2019, May 7, 2021

This practice notice is intended to provide guidance on how to serve documents on and file documents with the Registrar of Trademarks (the "Registrar").

Service of the notice of appeal or the notice of application for judicial review

Whether or not the Registrar is named as Respondent in a notice of appeal or a notice of application filed with the Federal Court, either appealing a decision of the Registrar under section 56 of the Trademarks Act (the "Act") or seeking judicial review of a decision of the Registrar, the Federal Courts Rules require that the notice of appeal or the notice of application be personally served.

Personal Service on the Registrar

In accordance with section 133 of the Federal Courts Rules, personal service of an originating document such as the notice of appeal of a decision of the Registrar under section 56 of the Act or the notice of application seeking judicial review of a decision of the Registrar is effected by filing the original document and two paper copies of it with the Federal Court Registry.

It is important to note that leaving these notices at the Canadian Intellectual Property Office (CIPO) mail room or sending them by courier, mail or facsimile does not constitute personal service.

Requirement to File the Notice of Appeal or the Notice of Application with the Registrar

In accordance with paragraph 56(2) of the Act, the notice of appeal or the notice of application for judicial review filed in the Federal Court must also be filed with the Registrar.

It is important to note that the requirements under subsection 56(1), (2) and (3) of the Act are mandatory in nature and a failure to comply with this provision may render the appeal a nullity (Crush International Limited v. Canada Dry Ltd., 47 C.P.R. (2d) 124).

A notice of appeal or a notice of application filed in the Federal Court may be filed with the Registrar in one of the following ways:

Canadian Intellectual Property Office
Attn: Trademarks Opposition Board
Place du Portage I
50 Victoria Street
Gatineau, QC K1A 0C9

Service of Other Documents

Service on the Registrar of documents other than the notice of appeal or the notice of application, which are not required to be served personally, may be effected by sending the document to the CIPO, attention Chairperson of the TMOB, at the address provided above. Service of these documents on the Registrar may also be effected by other forms of service (see sections 138 to 143 of the Federal Courts Rules on other forms of service).

Federal Court Judgments and Stays of Proceedings

In accordance with section 61 of the Trademarks Act, a certified copy of every judgment or order of the Federal Court, Federal Court of Appeal, and the Supreme Court of Canada relating to a trademark is filed with the Registrar by an officer of the Registry of the Federal Court.

Section 50 of the Federal Courts Act provides for stays of proceedings being conducted before the Federal Courts and provides that the Federal Court may stay the actions of the Registrar pending an appeal from the Federal Court to the Federal Court of Appeal (Ault Foods Ltd v Canada (1992), 44 CPR (3d) 507 (F.C.T.D.).

Despite any subsequent appeals from the Federal Court to the Federal Court of Appeal of decisions of the Registrar (with the exception of subsequent appeals in opposition and section 45 proceedings as discussed below), the Registrar must, absent a stay of proceedings, act in accordance with all judgments and orders of the Federal Court.

Actions by the Registrar After a Judgment

Pursuant to section 40 and subsection 45(5) of the Trademarks Act, in appeals concerning a decision of the Registrar under subsections 38(12) or 45(4) respectively, the Registrar shall act in accordance with "the final judgment given in the appeal."

The Registrar considers the judgment of the Federal Court to be the final judgment unless that Federal Court judgment is subsequently appealed to the Federal Court of Appeal. In such a case, the Registrar considers that he cannot act under section 40 or subsection 45(5) of the Trademarks Act until such time as the Federal Court of Appeal renders its judgment, which judgment is considered to be the final judgment given in the appeal (unless the matter is then heard by the Supreme Court of Canada, in which case, the final judgment is that of the Supreme Court of Canada).

The accuracy of the Register of Trademarks and the status of the trademarks at issue in litigation depends upon the parties keeping the Registrar apprised of the conduct of litigation, including notifying the Registrar of the commencement and disposition of any and all subsequent appeals. Copies of litigation documents can be sent to the attention of:

Canadian Intellectual Property Office
Attn: Trademarks Opposition Board

Place du Portage I
50 Victoria Street
Gatineau, QC K1A 0C9

This practice notice is intended to provide guidance on the CIPO practice and interpretation of relevant legislation. However, in the event of any inconsistency between this notice and the applicable legislation, the legislation must be followed. The provisions of this practice notice are general guidelines only, are not binding in any particular case and are subject to change.

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