Learn more about the legislative changes that will apply to opposition and section 45 proceedings as of June 17, 2019, and the upcoming changes with respect to the Madrid Protocol

The Canadian Intellectual Property Office is pleased to offer the following two webinars, which provide information on all the changes that will apply to opposition and section 45 proceedings as of June 17, 2019. 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.

Webinar | Trademarks Opposition Board proceedings | What to expect as of June 17, 2019

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.

The Madrid Protocol: Oppositions and Section 45 Proceedings

Questions and Answers

Following are questions and answers pertaining to the opposition of Protocol applications and section 45 proceedings against Protocol registrations.

1. Statements of Opposition Against Protocol Applications
  1. How can I file a statement of opposition against a Protocol application? Who may access the online system?

    A statement of opposition against a Protocol application must be filed in English or French by using the online service accessible through CIPO's website. The online service is accessible worldwide and allows work to be saved and resumed prior to submission.

  2. What happens once a statement of opposition against a Protocol application has been filed?

    Once a statement of opposition is filed, the Registrar will send to the International Bureau a notification of provisional refusal based on opposition with respect to all of the goods and services for which protection in Canada has been sought. This can be contrasted with some other jurisdictions where partial refusals pertaining to only some of the goods and services are sent.

    Once a provisional refusal has been sent, the Trademarks Database will be updated to reflect this and a copy will be sent to both the opponent and the applicant when the statement of opposition is forwarded.

  3. Will it be possible to amend the statement of opposition to add a new ground of opposition or trademarks?

    Once the provisional refusal has been sent, it will not be possible to amend the statement of opposition to add a new ground of opposition or to reference additional trademarks. This is consistent with the strict timing requirements for a provisional refusal to be received by the International Bureau under Article 5(2) of the Madrid Protocol.

    It is therefore necessary that all relied upon trademarks be included along with their particulars at the time of filing. This includes common law marks and third party marks.

2. Timing Requirements
  1. What are the strict timing requirements for a provisional refusal to be received by the International Bureau?

    Article 5(2) of the Madrid Protocol requires that a provisional refusal based on an opposition be received by the International Bureau before the 18 month deadline or, if a notice has been sent to the International Bureau that an opposition may be filed after 18 months, within seven months after the beginning of the opposition period or within one month after the end of the opposition period, whichever is earlier.

    For oppositions, if CIPO fails to meet the strict time limits imposed by the Madrid Protocol with respect to the notification of a provisional refusal based on opposition, the Protocol application will register.

  2. Are there any circumstances in which the International Bureau can revoke a grant of protection after the time limit?

    A grant of protection can be revoked after the time limit through CIPO notifying the International Bureau of an invalidation of the Protocol registration covering Canada for all or some of the goods and services. This can occur if it is expunged or cancelled under a decision of the Registrar (under section 45 of the Trademarks Act) or the Federal Court (under section 57 of the Trademarks Act).

3. Extensions of Time to File a Statement of Opposition
  1. What extensions of time are available to an opponent to file a statement of opposition against a Protocol application?

    Upon request of an opponent, the Registrar will generally grant a single extension of time of four months of the initial deadline to oppose a Protocol application. This will ensure that the International Bureau is notified of any provisional refusals based on opposition before the deadlines imposed by the Madrid Protocol.

    If an opponent files its request after the deadline to oppose the application, the Registrar may grant a retroactive extension of time to oppose a Protocol application (of up to four months from the initial deadline).

    Due to the limited time available for extensions, the Registrar will not grant a cooling-off period before the filing of the statement of opposition.

4. Amendment of Applications During Opposition
  1. Can an applicant withdraw certain goods or services from the Protocol application during the opposition proceedings?

    A Protocol application may be amended during the course of an opposition. While it is possible to amend the goods and services in a Protocol application directly with the International Bureau, for efficient processing it is preferable that an applicant do so by filing an amended application directly with the Registrar. The Registrar will then assess whether the amendment complies with section 35 of the Trademarks Regulations.

5. Process Once the Opposition Ends
  1. What happens in the case of the abandonment or the refusal of the application?

    If the application is abandoned, deemed abandoned or is refused, the Registrar will send a statement of confirmation of total provisional refusal to the International Bureau.

  2. What happens if an opposition is withdrawn or rejected?

    If an opposition is withdrawn, deemed withdrawn, or rejected, the trademark will register. A registration certificate will issue and a statement of grant of protection will be sent to the International Bureau specifying the goods and services protected in Canada.

6. Transformation
  1. Can a Protocol application or Protocol registration be converted into a national application or registration?

    An International Registration is dependent on its basic application and/or basic registration for five years. If the basic application or registration is cancelled with respect to some or all of the goods or services listed in the International Registration, the Office of Origin will notify the International Bureau, who will cancel or restrict the International Registration accordingly. Once CIPO receives notification that the IR is cancelled in whole or in part, it will cancel in whole or in part the Protocol application or Protocol registration. If this occurs in these circumstances, the owner of the Protocol application or Protocol registration may "transform" the goods and/or services to which the cancellation applies into a national application or registration.

7. Proceedings Under Section 45 and Protocol Registrations
  1. Are partial section 45 requests against Protocol registrations allowed?

    Partial section 45 requests against Protocol registrations are permitted. Protocol registrations will be treated the same as domestic registrations. A requesting party may request a section 45 notice issue against all of the goods or services in a registration or only some of the goods or services. If a final decision expunges the registration of one or more goods or services, the Protocol registration would be expunged or amended accordingly, and the International Bureau would be notified of the change of protection in Canada.

8. Treatment of Divisionals Application in Opposition
  1. What happens when a Protocol application is divided?

    A divided Protocol application would benefit from steps taken in relation to the original Protocol application. As such, any ongoing opposition on the original application would be deemed to have been filed against the divisional application and steps taken in that opposition would apply to the divisional application.

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