Service of Documents on the Registrar of Trademarks

Publication date: 2008-01-23

This practice notice is intended to provide guidance on current Canadian Intellectual Property Office 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 following practice notice provides guidance on how to effect service on the Registrar of Trademarks (the "Registrar").

Appeals of Decisions of the Registrar (Section 56 of the Trade-marks Act) and other Notices of Application filed with the Federal Court

Whether or not the Registrar is named as Respondent in a notice of application filed with the Federal Court either appealing a decision of the Registrar under section 56 of the Trade-marks Act or seeking judicial review of a decision of the Registrar, rules 304(1)(b) and 127 of the Federal Courts Rules require that the notice of application be personally served upon the Registrar.

Personal Service

Where a document is required to be personally served on the Registrar, personal service may be effected by:

1. Attending at the Canadian Intellectual Property Office and personally leaving the document with an employee in the Executive Office of the Registrar who is authorised to accept service on behalf of the Registrar.

The Canadian Intellectual Property Office
Executive Office to the Registrar of Trademarks

50 Victoria Street, Phase I
4th Floor
Gatineau, Quebec
K1A 0C9
Tel.: 819-994-5179

OR

2. Rule 133 of the Federal Courts Rules provides that personal service of originating documents on the Registrar may be effected by filing the originating document and two copies of it with the Federal Court Registry.

Leaving documents at the Canadian Intellectual Property Office mail room or sending the documents by courier, mail or facsimile does not constitute personal service.

Requirement to File Copies of all Notices of Appeal

All notices of appeal filed in the Federal Court appealing a decision of the Registrar must also be filed with the Registrar (ss.56(2)of the Trade-marks Act). The requirements under subsections 56(1), (2) and (3) of the Trade-marks Act are obligatory 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). Notices of appeal from decisions of the Registrar filed in the Federal Court may be transmitted to the attention of:

The Canadian Intellectual Property Office
Attention: I.C. Legal Services

50 Victoria Street, Phase I
4th Floor
Gatineau, Quebec
K1A 0C9

Tel.: 819-994-0015
Fax: 819-997-1890

Non-Personal Service

Where a document is not required to be personally served, service may be effected on the Registrar by sending the document to the Canadian Intellectual Property Office, attention IC Legal Services, at the address provided directly above. Non-personal service may include, where the applicable rules of court allow: mailing the document, delivering the document by courier or transmitting the document by facsimile (see for example Rules 138 -143 of the Federal Courts Rules).

Federal Court Judgments and Stays of Proceedings

In accordance with section 61 of the Trade-marks 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 Federal Court.

Section 50 of the Federal Courts Act provides for stays of proceedings being conducted before the Federal Courts and 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 C.P.R. (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.

Appeals of Decisions from the Registrar in Opposition and Section 45 Proceedings

Pursuant to subsections 39(1) and 45(5) of the Trade-marks Act, the Registrar must act in accordance with "…the final judgment given in the appeal." In appeals concerning a decision of the Registrar under subsections 38(8) or 45(4) respectively, 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 the case of a subsequent appeal to the Federal Court of Appeal, the Registrar considers that she can not act under subsections 39(1) or 45(5) of the Trade-marks 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 is 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, including notices of appeal and discontinuances can be sent to the attention of:

The Canadian Intellectual Property Office
Attention: I.C. Legal Services

50 Victoria Street, Phase I
4th Floor
Gatineau, Quebec
K1A 0C9

Tel.: 819-994-0015
Fax: 819-997-1890

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