Learn more about the changes now in effect at the Trademarks Opposition Board
From: Canadian Intellectual Property Office
The Canadian Intellectual Property Office is pleased to offer the following three webinars, which provide information on all the changes now in effect at the Trademarks Opposition Board, further to the coming into force of the amended Trademarks Act, the new Trademarks Regulations and further to the accession of Canada to the trademark treaties. If you are an intellectual property professional, organization, business or entrepreneur with an interest in this area, you will surely find these webinars to be useful and informative.
This first one-hour webinar reviews how the changes to the Trademarks Act, the Trademarks Regulations and to the Trademarks Opposition Board’s practice notices affect procedural issues in opposition and section 45 proceedings.
This second one-hour webinar reviews the upcoming changes to the Trademarks Regulations with respect to opposition and section 45 proceedings for protocol applications and registrations.
This third one-hour webinar provides a demonstration of the Trademarks Opposition Board's new and improved e-Services for opposition and section 45 proceedings.
Questions from participants
Q1: Is it possible to enter multiple opponents?
A1: Yes. A statement of opposition may name any number of persons jointly as opponents. You may enter multiple names in the “opponent name” field and separate each by a comma. However, you may only enter one address.
Q2: Can evidence be e-filed in colour?
A2: Yes. The Board's e-Services allow for the filing of evidence in colour.
Q3: Is there any limitation on the file size and format of documents to upload (for evidence, written representation, etc.)?
A3: The maximum size allowed by the Board's e-Services is 100 MB per file. However, please note that a file that is larger than 100 MB can be broken down into smaller parts; you may upload multiple documents per transaction. For a list of acceptable file formats and for additional information on the electronic submission of evidence, please consult the practice notice entitled Electronic evidence in opposition and section 45 proceedings.
Q4: What can be submitted through general correspondence tab?
A4: Please note that the general correspondence tab can only be used for active files. Submissions through the general correspondence tab may be made by any party for both opposition and section 45 proceedings.
The following requests may be submitted through the general correspondence tab:
- Leave request to amend a statement of opposition
- Leave request to amend a counter statement
- Leave request to submit additional evidence
- Request for an interlocutory ruling without an extension of time request
- Correspondence to a Board member
- Appointment or revocation of an agent
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 through the general correspondence tab for the purpose of opposition or section 45 proceedings will NOT be processed by the Registrar.
Additionally, if the document you wish to submit through the general correspondence tab requires to be served, please ensure that all service of document information is included in your cover letter.
Q5: If we are currently using the Trademarks Branch e-Services to file applications, does it mean that we'll automatically be able to use the TMOB e-Services without extra registration?
A5: Yes. You will be able to use the same account credentials for both the Trademarks Branch e-Services and the Trademarks Opposition Board e-Services sites.
Q6: If I start with the e-filing services, do I have to use it for all stages of a proceeding, or can I send some documents by mail?
A6: You may use either the Board's e-Services site or mail to send your correspondence to the Board. You are not restricted to use one method or the other. Using the Board's e-Services will allow your correspondence to reach the Board much more quickly than if sent by regular mail. When submitted through the e-Services, your correspondence is received directly by the Board, whereas, when received by regular mail, your correspondence must go through a number of different channels within CIPO before reaching the Board.
Q7: Confirmation statements require that documents "have been served on the other party", which implies that the documents are to be served first, before filing. How can copies of documents generated through the e-services be served before filing?
A7: The Board's e-Services do not currently allow users to generate documents or reports which could then be served on the other party. The preparation and service of these documents must be performed outside of the Board's e-Services. You must serve these documents on the other party prior to submitting your transaction through the e-Services, in order to be able to notify the Board of the manner and effective date of service of the documents when filing them using the Board's e-Services.
Q8: Is it possible to notify a party that documents have been uploaded to the system and invite them to consult them online - especially the evidence - instead of sending them?
A8: The Board's e-Services do not currently allow users to generate documents or reports which could then be viewed by the other party. When submitting evidence using the e-Services, you must notify the Board of the manner and effective date of service of the documents.
Q9: Is it possible to use the Board's e-Services to file a statement of opposition for a trademark application that has been advertised before the coming into force of the amended Trademarks Act?
A9: No. The grounds of opposition available through the Board's e-Services reflect those of the amended Trademarks Act that came into force on June 17, 2019. Filing a statement of opposition through the e-Services should only be completed for applications that were advertised after June 17, 2019.
For applications that were advertised before June 17, 2019, please submit the statement of opposition to the Trademarks Opposition Board on paper.
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