Opposition to Protocol applications and section 45 cancellation proceedings against Protocol registrations

This practice notice is intended to clarify the practice of the Canadian Intellectual Property Office (CIPO) with respect to opposition proceedings concerning Protocol applications and Section 45 Cancellation Proceedings concerning Protocol registrations.

Publication date: 2019-06-17

Relevant legislation and practice notices

This Practice Notice makes reference to the following treaties, legislation and practice notices:

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I Opposition proceedings

I.1 Protocol applications will be treated the same as domestic applications

Unless otherwise required by the Madrid Protocol and set out in the Regulations, a Protocol application undergoes the same opposition process as a domestic application.

I.2 Notice of opposition period

129 If, in respect of a Protocol application, it is likely that the opposition period will extend beyond the end of 18 months after the date of notification of territorial extension, the Registrar must so inform the International Bureau.

CIPO will notify the International Bureau (IB) of all Protocol applications yet to be advertised ten months after the deemed filing date of each application and update the Canadian Trademarks Database to show this notification. The sending of the notice at this time will allow potential opponents to request and obtain the full four-month extension of time to file a statement of opposition.

I.3 Extension limitation when filing a statement of opposition to a protocol application

125 In respect of a Protocol application, the Registrar is not permitted, on application made to the Registrar, to extend, under section 47 of the Act, the two-month period referred to in subsection 38(1) of the Act by more than four months.

This limitation of extensions of time is to ensure that the Registrar is in a position to notify the IB of a provisional refusal based on opposition within the 18-month time limit set out in the Madrid Protocol.

Article 5(2) of the Madrid Protocol explains that an office may notify a refusal of protection after the expiry of the 18-month time limit only in certain circumstances:

If CIPO does not notify the IB of a provisional refusal based on opposition within the time limit specified in Article 5(2) of the Madrid Protocol, the opposition cannot proceed, and the Protocol application will mature to registration and the trademark will be protected in Canada (see sections 132(1)(c) and (d) of the Regulations).

Upon request, the Registrar will generally grant a single extension of time of four months of the deadline to oppose a Protocol application. The Registrar cannot grant an extension of time on request to file a statement of opposition beyond four months, including requests based on exceptional circumstances or a cooling-off period. However, cooling-off periods and extensions of time based on exceptional circumstances will be available after the filing of the statement of opposition as set out in Practice in Trademarks Opposition Proceedings.

It is recommended that the on-line window for filing extensions be utilized. The use of the on-line extension window permits confirmation of receipt, while reducing delay and the possibility of mishandling of submissions en route to CIPO.

There may be cases where the Registrar will automatically extend the deadline to oppose a Protocol application, where circumstances beyond anyone's control would prevent the meeting of this deadline (for example, floods, wild fires, tornadoes). In such cases, the Registrar will make this known on CIPO's website.

I.3.a Retroactive extension of time

Pursuant to section 47(2) of the Act and subject to the limitation in section 125 of the Regulations, the Registrar may grant a retroactive extension of time to oppose a Protocol application. Due to the time it may take to process a retroactive extension of time request, it is recommended that a statement of opposition be filed and the statement of opposition fee be paid at the same time as applying for the extension of time. If it is not filed at the same time, there is a risk that the time required to process the extension of time, will not allow the opponent time to file the statement of opposition and the Registrar to send the provisional refusal based on opposition to the IB prior to the deadline set out in Article 5(2) of the Madrid Protocol.

I.4 Filing a statement of opposition

126 A statement of opposition under section 38 of the Act in respect of a Protocol application must be in English or French and be filed by using the online service that is designated by the Registrar as being accepted for that purpose.

This requirement is intended to:

A statement of opposition not filed through the online system will not be considered and an opposition proceeding will not be instituted against the application.

Hard copies of electronically-filed documents should not be sent to the Registrar as to do so may result in processing delays.

The information entered into the form must be entered in English or French. It cannot include both languages (with the exception of the information concerning the relied upon trademark applications, registrations and prohibited marks).

I.4.a Plan ahead

It is recommended to plan ahead. Because unexpected technological problems can occur, users should keep filing deadlines in mind and allow plenty of time to resolve any issues which may arise.

Once four or more months have passed since the date of advertisement, the Registrar is precluded from granting an extension of time on request (see section 125 of the Regulations).

I.4.b Procedure when the on-line system for filing a statement of opposition is down

If the on-line system is down during CIPO's business hours, the Registrar will place an alert on CIPO's website, send a notification through the Trademarks Listserv and change the voicemail message on the general information number to advise that the system is down.

If, when filing a statement of opposition, outside of business hours, the on-line system is down or no confirmation that the statement of opposition has been received upon filing, please follow the procedure outlined below for when the on-line system is down.

When the on-line system is down or no confirmation is received outside of business hours, statements of opposition must be filed by attaching the statement of opposition to an email and sending it to the following address: ic.tmobmadrid-comcmadrid.ic@canada.ca. To assist in the preparation of the provisional refusal based on opposition, the form at Schedule A should be used. Statements of opposition sent to this email address at any time other than when the (i) on-line system is down or (ii) no confirmation has been sent out will not be considered by the Registrar.

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I.5 Assessment of the statement of opposition

Once filed, a statement of opposition will be reviewed by the Registrar prior to the notification of provisional refusal being sent to the IB.

If the Registrar considers that the opposition raises a substantial issue for decision pursuant to section 38(4) of the Act, a copy of the statement of opposition will be forwarded to the applicant and a notice of provisional refusal based on opposition will be sent to the IB. As with domestic applications, the forwarding of the statement of opposition triggers an applicant's deadline to file and serve its counter statement [section 38(6) of the Act].

If the Registrar considers that the opposition does not raise a substantial issue for decision, the statement of opposition will be rejected pursuant to section 38(4) of the Act and the reasons for rejection will be provided to the opponent. A notice of provisional refusal will be sent to the IB to allow for the possibility that the rejection could be appealed pursuant to section 56 of the Act. If the rejection is overturned on appeal, the statement of opposition will be forwarded to the applicant. As with domestic applications, the forwarding of the statement of opposition triggers an applicant's deadline to file and serve its counter statement [section 38(6) of the Act]. If the rejection is not appealed or the Registrar's decision to reject the statement of opposition is upheld on appeal, a statement of grant of protection will be sent to the IB when a registration certificate issues with respect to that application.

I.6 Notification of provisional refusal

127 If, in respect of a Protocol application, a statement of opposition is filed, the Registrar must send to the International Bureau a notification of provisional refusal.

After a statement of opposition has been filed, a letter to the IB will be prepared attaching the statement of opposition. This will be the provisional refusal based on opposition and will have the information required in Rules 16 and 17 of the Common Regulations including:

A copy of the provisional refusal as sent to the IB will be sent to the opponent and the applicant. The Canadian Trademarks Database will also be updated to show that the provisional refusal based on opposition has been sent. If an opponent has filed a statement of opposition and the Canadian Trademarks Database has not been updated to show that the provisional refusal has been sent to the IB within two weeks of its filing, the Trademarks Opposition Board (TMOB) should be contacted by calling either 1-866-997-1936 and asking to be transferred to the TMOB or calling (819) 997-7300 directly.

I.7 Opposition proceeds according to the usual process

Once the statement of opposition is forwarded to the applicant and the provisional refusal has been sent to the IB, the file will follow the usual opposition process and existing procedures, as outlined in section 38 of the Act, sections 42-58 of the Regulations, and Practice in Trademark Opposition Proceedings, until a decision is reached and the appeal period has expired.

I.8 Process once opposition proceedings are concluded

130 The Registrar must send a statement of confirmation of total provisional refusal in respect of a Protocol application to the International Bureau if:

132(1) In respect of a trademark that is the subject of a Protocol application, the Registrar must register the trademark in the name of the applicant, issue a certificate of its registration and send a statement to the International Bureau that protection is granted to the trademark if:

I.8.a Decision is reached

Once a decision on the opposition has been issued, and the appeal period has expired, the Registrar must notify the IB of the final decision on the provisional refusal based on opposition. If the Registrar's decision is appealed, the IB is notified of the final decision after all proceedings have concluded. In the case of multiple oppositions, the IB is only notified once there is a final decision refusing the application OR all proceedings have been concluded such that a statement of grant of protection will be sent. A copy of the statement of grant of protection or confirmation of total provisional refusal will be sent to the applicant and the opponent(s).

I.8.b Opposition is withdrawn

If an opposition is withdrawn and no other opposition proceedings are on-going, a statement of grant of protection will be sent to the IB. A copy of the statement of grant of protection will also be sent to the opponent and the applicant.

I.8.c Application is deemed abandoned

If an application is deemed abandoned under section 36 or subsection 38(11) of the Act, CIPO will communicate this abandonment through a confirmation of total provisional refusal to the IB. A copy of the confirmation of total provisional refusal will be sent to the opponent and the applicant.

I.9 Irregularity

If there is a problem with the provisional refusal, the IB will notify CIPO of an irregularity.

If a notice of irregularity issues because the provisional refusal was sent outside the time limit set forth in Article 5(2) of the Madrid Protocol, the provisional refusal will not be recorded and the trademark will mature to registration (see also section 132(1)(d) of the Regulations).

If a notice of irregularity issues because the provisional refusal is irregular in other respects (for example, if the notification of provisional refusal does not contain a reproduction of a conflicting earlier mark, or if other relevant details relating to an earlier mark, including the name and address of its owner, are missing), the IB will invite CIPO to rectify its notification within two months. If the two month deadline is not met, the provisional refusal will not have any effect and the trademark will mature to registration (see Rule 18(1)(d) of the Common Regulations).

Irregularities requiring remedy solely by CIPO will be addressed by CIPO without any input required on the part of the opponent.

If an irregularity needs to be addressed by the opponent, the opponent will be informed and asked to provide a response within two weeks so that CIPO may respond to the IB within the two-month deadline. If an email address or facsimile number has been provided for the opponent, CIPO will send a courtesy copy of the irregularity and any correspondence generated by the Registrar by email or facsimile.

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I.10 No new grounds of opposition

128 If the Registrar sends to the International Bureau a notification of provisional refusal based on an opposition, the statement of opposition may not be amended to add a new ground of opposition.

The obligation to notify the IB of the potential grounds of opposition within the strict time limits set out in Article 5(2) of the Madrid Protocol is the underlying reason for section 128 of the Regulations. As such, an opponent should ensure that it has included all applicable grounds in its statement of opposition. Furthermore, as the provisional refusal filed with the IB cannot be amended at a later date to include additional trademarks, all relied upon trademarks, including common law trademarks, should be included along with their particulars, including (if applicable) the application number, registration number, filing date, and registration date, a reproduction of the trademark, and goods and services (for further information see the Common Regulations, Rules 17(2)(v) and 18(2)).

The Registrar may consider an amendment to an existing ground of opposition to be a new ground if the amendment substantially changes the basis on which this ground was originally pleaded. In assessing whether an amendment seeks to add a new ground of opposition, the statement of opposition as a whole will be considered. An example of an amendment that could potentially be considered a new ground, would be the addition of a trademark that was not pleaded in the original statement of opposition. An amendment which could potentially not be considered a new ground is if there was a section 12(1)(b) ground of opposition and a section 2 ground of opposition which simply alleges that the trademark was not distinctive without any further allegations was amended to state that the trademark was not distinctive because it was clearly descriptive.

In recognition of the fact that an opponent may wish to rely on the maturation of a referenced application under section 12(1)(d) of the Act, an amendment to the statement of opposition to reference the addition of a registration to an existing section 12(1)(d) ground will not generally be considered a new ground of opposition so long as the corresponding application was referenced in the statement of opposition and a copy of the application was sent to the IB.

I.11 Additional reasons for extensions beyond benchmarks

Practice in Trademarks Opposition Proceedings establishes various benchmarks for extensions of time and cooling off periods at different stages of the opposition proceeding. Parties wishing to exceed these benchmarks should generally point to exceptional circumstances to obtain a further extension of their deadline. The Registrar may consider certain communications from the IB or the applicant for a Protocol application to constitute exceptional circumstances, including where the trademark is the subject of a correction, limitation, cancellation or transformation.

I.12 Limitations

While a limitation to the International Registration in respect of Canada can be made directly with the IB, for efficient processing it is preferable that an applicant wishing to amend the goods and services in a Protocol application, for which a provisional refusal based on opposition has already been sent to the IB, do so by filing an application directly with the Registrar. The Registrar will then assess whether the amendment complies with section 35 of the Regulations and will advise the applicant and opponent accordingly. If no provisional refusal with respect to the Protocol application has been sent, then an applicant will have to limit the International Registration directly with the IB.

I.13 Failure to consider a request for extension of time

142(1) The Registrar may remove a Protocol registration from the register if the Registrar registered the trademark without considering a previously filed request for an extension of time to file a statement of opposition, unless the time limit under Article 5(2) of the Protocol to make a notification of provisional refusal based on an opposition has ended.

If the Registrar becomes aware that a Protocol application has registered without having considered a previously filed request for an extension of time to file a statement of opposition, which would otherwise have been granted, and the time limit under Article 5(2) has not yet expired, the Registrar will remove the Protocol registration and immediately notify the potential opponent, including by email or facsimile (if provided). While the Registrar is not permitted to extend the time for filing a statement of opposition beyond four months on request see I.3 Extension Limitation when Filing a Statement of Opposition to a Protocol Application, the Registrar may exercise discretion to do so on its own initiative, in appropriate circumstances.

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II Section 45 cancellation proceedings

Section 45 Cancellation Proceedings against a Protocol registration will follow the same process as a section 45 proceeding against a domestic registration, as set out in sections 67-74 of the Regulations and the Practice in Section 45 Proceedings, with the exception of an additional step.

In the case of a Protocol registration, once a final decision is reached and the appeal period has expired, if the registration is expunged in whole or in part, the IB will be notified pursuant to Rule 19. If the registration is expunged in whole, the IB will be notified of a full invalidation; if the registration is expunged in part, the IB will be notified of a partial invalidation.

This practice notice is intended to provide guidance on the 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 provisions of this practice notice are general guidelines only, are not binding in any particular case and are subject to change.

Schedule A (Sample form for statement of opposition)

View as PDF (PDF: 195 KB; 8 pages)

In the event that the online system is down, the following may be used to prepare a statement of opposition for filing against a Protocol Application. Completed forms may be sent by email to the following address: ic.tmobmadrid-comcmadrid.ic@canada.ca.

This form must be completed in English or French (with the exception of the information concerning the relied upon trademark applications, registrations and prohibited marks).

Using this suggested form will allow the Registrar to efficiently and accurately prepare the Notification of Total Provisional Refusal Based on Opposition to be Filed with the International Bureau.

Provide the following information concerning the Opposed trademark application.

Trademark application no.

International registration no.

Trademark

Applicant

Statement of goods and services

Advertisement date

Please attach CIPO Fee Payment Form (or otherwise complete fee information here)

Provide the following information concerning the Opponent.

Full name of the opponent

Address of the opponent (if not based in Canada, also the address for service in Canada or the address of the opponent's agent based in Canada)

Full name of the opponent's agent (if any)

Address of the opponent's agent (if any)

Email address of the opponent's agent (if any)

Email address of the opponent (if no appointed representative or agent)

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Grounds of opposition

Please check and complete only the relevant boxes that apply. Unless stated otherwise, all section references are references to the Trademarks Act.

Section 38(2)(a) – The application does not conform to the requirements of subsection 30(2):

Section 30(2)(a) – The application does not contain a statement in ordinary commercial terms of the goods and services associated with the trademark applied for.

Please list the goods and services not specified in ordinary commercial terms (required)

Section 30(2)(b) – The application does not contain particulars of the defined standard that the use of the certification mark is intended to indicate and/or a statement that the applicant is not engaged in the manufacture, sale, leasing or hiring of goods or the performance of services such as those in association with which the certification mark is used or proposed to be used.

Please specify whether the application does not contain the particulars of the defined standard or whether the applicant is engaged in the manufacture, sale, leasing or hiring of goods or the performance of services such as those with which the certification mark is used or proposed to be used, or the applied-for mark is not a certification mark and any additional information. (required)

Section 30(2)(c) – The application does not contain a representation or description, or both, that permits the trademark to be clearly defined and that complies with any prescribed requirements under section 30 of the Trademarks Regulations.

Please identify subsection(s) of section 30 of the Trademarks Regulations not complied with. (required)

Please explain why the application is being opposed on this ground. (required)

Section 30(2)(d) – The application does not contain the information or statement prescribed by section 31 of the Trademarks Regulations.

Please identify subsection(s) of section 31 of the Trademarks Regulations not complied with. (required)

Please explain why the application is being opposed on this ground

Section 38(2)(a.1) - The application was filed in bad faith.

Please explain why the application is being opposed on this ground (required)

Section 38(2)(b) - The trademark is not registrable:

Section 12(1)(a) – The trademark is not registrable because it is a word that is primarily merely the name or the surname of an individual who is living or has died within the preceding thirty years.

Please provide details. (required)

Section 12(1)(b) – The trademark is not registrable because whether depicted, written or sounded it is either clearly descriptive or deceptively misdescriptive of:

  1. the character or quality of the goods or services in association with which it is used or proposed to be used
  2. the conditions of or the persons employed in the production of the goods or services
  3. the place of origin of the goods or services

Please check one or more of the relevant boxes below: (required)

the character or quality of the goods or services in association with which it is used or proposed to be used

the conditions of or the persons employed in the production of the goods or services

the place of origin of the goods or services

Please list the good(s) or service(s) to which your option applies. (required)

Please select the language in which the trademark is either clearly descriptive or deceptively misdescriptive (required)  French  English

Any additional information

Section 12(1)(c) – The trademark is not registrable because it is the name of any one of the goods or services with which the trademark is used or proposed to be used.

Please specify in which language is the trademark (required)

Please specify the name of the good(s) or service(s) (required)

Please list the applicable good(s) or service(s) (required)

Please provide any other detail

Section 12(1)(d) – The trademark is not registrable because it is confusing with a registered trademark.

Please provide the trademark application or registration number(s) of the relied upon trademarks (required)

Please provide any other detail. If you are relying on a family of trademarks, please use the field below to provide information in this respect. (required)

Section 12(1)(e) – The trademark is not registrable because it is a sign or combination of signs whose adoption is prohibited by sections 9 or 10.

Please check the appropriate box depending if the adoption of the trademark is prohibited by section 9 or section 10 of the Trademarks Act.

Section 9 – The adoption of the trademark is prohibited by section 9.

Prohibited mark serial number(s) (required)

Please identify the subsection(s) of section 9 on which this ground of opposition is based and explain why the adoption of the trademark is prohibited by the subsection(s). (required)

Section 10 – The adoption of the trademark is prohibited by section 10:

The trademark has become recognized as designating the following with respect to the goods and services with which it is associated: (required)
 kind
 value
 quality
 place of origin
 quantity
 date of production
 destination

Any additional information (required)

Section 12(1)(f) – The trademark is not registrable because it is a denomination whose adoption is prohibited by section 10.1.

Please specify the denomination detail (required)

Any additional information

Section 12(1)(g) – The trademark is not registrable because it is, in whole or in part, a protected geographical indication identifying a wine, where the trademark is to be registered in association with a wine not originating from a territory indicated by the geographical indication.

Please provide the protected geographical indication file number (required)

Any additional information

Section 12(1)(h) – The trademark is not registrable because it is, in whole or in part, a protected geographical indication identifying a spirit, where the trademark is to be registered in association with a spirit not originating from a territory indicated by the geographical indication.

Please provide the protected geographical indication file number (required)

Any additional information

Section 12(1)(h.1) – The trademark is not registrable because it is, in whole or in part, a protected geographical indication, and the trademark is to be registered in association with an agricultural product or food – belonging to the same category, as set out in the schedule, as the agricultural product or food identified by the protected geographical indication – not originating in a territory indicated by the geographical indication.

Please provide the protected geographical indication file number (required)

Any additional information

Section 12(1)(i) – The trademark is not registrable because it is a mark whose adoption is prohibited by subsection 3(1) of the Olympic and Paralympic Marks Act, subject to subsection 3(3) and paragraph 3(4)(a) of that Act.

Please provide the details of the Olympic or Paralympic mark(s) that the mark so nearly resembles as to be likely to be mistaken for it by including the trademark and reference to the legislation. (required)

Section 12(2) – The trademark is not registrable because, in relation to the goods or services in association with which it is used or proposed to be used, its features are dictated primarily by a utilitarian function.

Please specify the applicable good(s) or service(s) (required)

Please explain how the features are dictated primarily by a utilitarian function. (required)

Section 104 of the Trademarks Regulations – The trademark is not registrable because the goods or services specified in the Protocol application are not within the scope of the international registration.

Please specify the applicable good(s) and service(s) (required)

Please explain how the goods or services specified in the Protocol application are not within the scope of the international application. (required)

Section 38(2)(c) – The applicant is not the person entitled to registration of the trademark:

Section 16(1)(a) – The applicant is not the person entitled to registration because the trademark applied for was confusing with a trademark previously used or made known in Canada by any other person.

Please list each trademark relied upon and its associated goods and services (Registration and application numbers of used or made known trademarks are acceptable.) *Trademarks which are relied upon and not the subject of an application or registration must be clearly identified along with the associated goods/services. (required)

Section 16(1)(b) – The applicant is not the person entitled to registration because the trademark applied for was confusing with a pending trademark application previously filed in Canada by any other person.

Please specify the trademark application number(s) (required)

Section 16(1)(c) – The applicant is not the person entitled to registration because the trademark applied for was confusing with a tradename previously used in Canada by any other person.

Please specify each tradename relied upon and its associated goods and services (required)

Section 38(2)(d) – The trademark is not distinctive.

Please explain why the trademark is not distinctive within the meaning of section 2 of the Act. (required)

Section 38(2)(e) – The applicant was not using or did not propose to use the trademark in Canada in association with the goods and services applied for, at the date the application was filed.

Please explain why the applicant was not using or did not propose to use the trademark. (required)

Section 38(2)(f) – The applicant was not entitled to use the trademark in Canada in association with the goods and services applied for, at the date the application was filed.

Please explain why the applicant is not entitled to use the trademark in Canada. (required)

Include printouts of each of the applications, registrations and prohibited marks relied upon in the statement of opposition or complete the following Information relating to each of the applications, registrations and prohibited marks relied upon in the statement of opposition.

Registration no.

Application no.

Filing date

Priority date (if any)

Full name of the owner

Address of the owner

Reproduction of the mark

Statement of goods and services if any

Date modified: