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Electronic evidence in opposition and section 45 proceedings

From: Canadian Intellectual Property Office

This practice notice intends to clarify the practice of the Canadian Intellectual Property Office (CIPO) with respect to the submission and service of electronic evidence.

Publication Date: 2019-06-17

Relevant legislation and practice notices

This Practice Notice refers to the following legislation and practice notices:

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I. Introduction

Section 64(1) of the Act gives the Registrar of Trademarks (the Registrar) the authority to accept evidence in electronic form and through electronic means, and to specify those forms and means. This Practice Notice gives guidance on how evidence in electronic form may be submitted to the Registrar in opposition and section 45 proceedings and served to other parties.

II. Electronic submission of evidence

II.1 Acceptable electronic means

II.1.a E-filing system

CIPO uses an e-filing system that allows the electronic submission of files. Clients can use the e-filing system to submit evidence electronically to the Registrar in opposition and section 45 proceedings. Parties wishing to use this system need to obtain an account and password.

II.1.b Physical media

The Registrar also accepts evidence submitted in electronic form stored on CDs, DVDs, or USB Keys.

In cases where a file is larger than the maximum allowed by the e-filing system (100 MB), and cannot be broken down into smaller parts, a CD, DVD or USB Key should be submitted to the Registrar. A party who is submitting part of their evidence through the electronic system and part through a CD, DVD or USB Key submitted to the Registrar, should identify in each case that partial evidence is being filed electronically and partial evidence is being filed by way of physical delivery to the Registrar.

II.2 Acceptable electronic file formats

The following table provides an outline of the acceptable electronic formats when providing various types of electronic files:

Acceptable electronic file formats
Type of File Acceptable Electronic File Format Notes
Document PDF Where possible, files should be searchable.
Image JPEG, TIFF, PNG, BMP, or GIF HI-Def where possible. GIF files must be still images.
Sound Recording MP3 --
Motion MP4 --

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II.3 Naming electronically-submitted material

The maximum number of characters for file names is 150 characters.

II.3.a Affidavits and statutory declarations

File names for affidavits and statutory declarations should be named according to the following naming convention:

Application number, full name of affiant or declarant, date sworn.
Example: 1294543_JohnDoe_affiant_2019-03-13.pdf

File names for exhibits should follow the same convention, but also include the exhibit number.
Example: 1294543_JohnDoe_affiant_2019-03-13_exhibit A-3.bmp

II.3.b Other files

There is no restriction on the naming of any other type of document, as long as the trademark application number and a description of the content of the file are present.

Example: 1294543_certified copies_TMA222222_TMA333333_TMA444444.pdf

II.4 Effective date of submission

Evidence submitted to the Registrar electronically is deemed to have been submitted on the date and local time on which it is received by the Registrar in Gatineau, QC section 10(4) of the Regulations]. For example, a document sent from Vancouver at 11:00pm (Pacific Time) on March 31 that arrives at the Registrar’s Office in Gatineau at 2:00am (Eastern Time) on April 1 is deemed to have been received on April 1.

II.5 Paper copies of evidence

Parties are asked not to submit paper copies of evidence that has already been sent electronically. If a prior submitted document/file contains an error, the party can submit a corrected version, unless the deadline to file evidence has passed, in which case the party can submit only after requesting and obtaining a retroactive extension of time or a granting of leave.

II.6 Other information

II.6.a Facsimile

The use of fax as an electronic mean of transmission for evidence presents issues such as the often-poor quality of transmission, the risk of incomplete transmission, the voluminous nature of the documents, etc., resulting in delays. Therefore, evidence submitted by facsimile in respect of an opposition or section 45 proceeding will not be accepted.

II.6.b Retention of affidavits and statutory declarations

Parties must retain the original of all affidavits and statutory declarations submitted electronically for one year after the expiry of all appeal periods (or, if an appeal is taken, until a final decision is given on that appeal) [section 13(1) of the Regulations].

If there is a concern with the quality of the copy, legibility, or authenticity of the affidavit or statutory declaration, the Registrar may ask for a copy of the original [section 13(2) of the Regulations].

II.6.c Page numbering

Page numbering must be clearly marked on each document. Documents submitted with "tabs" to facilitate organization (for example, exhibits) should apply a single, continuous, and legible numbering scheme either:

In cases where the document is scanned from a paper copy, the Registrar will accept a document that has bookmarked the exhibits.

II.6.d The electronic file submitted will be the evidence

Files submitted electronically to the Registrar should be "uneditable". That is, it should not be possible to manipulate or alter the files. Note that the exact file transmitted through the e-filing system will be the one the Registrar considers as evidence. Ensure that the file you are submitting is exactly as you would like it to be.

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III. Electronic service of evidence

III.1 Consent

In order to serve evidence electronically, the party being served must provide their consent [sections 46(1)(e) and 71(1)(e) of the Regulations]. The Registrar may request that proof of that consent be provided as part of proof of service (see III.4.a below).

III.2 Acceptable electronic means

Any electronic means will be accepted so long as the party being served has consented.

III.3 Effective date of service

Documents served electronically are deemed to have been served the day the document is transmitted [sections 46(6) and 71(6) of the Regulations]. The day of transmission is determined by the day of the party sending the transmission. For example, a document sent from Vancouver at 11:00pm (Pacific Time) on March 31 received at 3:00am (Atlantic Time) is deemed to have been served in Halifax on March 31.

III.4 Notice to the Registrar

The party effecting service must notify the Registrar of the manner of service and the effective date of service [sections 46(8) and 71(8) of the Regulations].

III.4.a Proof of service

If the Registrar asks for proof of service, a party will have one month to provide that proof, or else that document will be deemed not to have been served [sections 46(9) and 71(9) of the Regulations]. The Registrar will consider the following as proof of service:

III.4.b Irregular service

Other types of service may still be deemed valid if Registrar determines that the document has been provided to the party being served, and informs the parties of that determination [sections 46(10) and 71(10) of the Regulations]. In these cases, the effective date of service is the day on which the document was provided to the party being served.

Please consult Practice in Trademark Opposition Proceedings for more information.

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IV. Hearings

IV.1 Paperless hearings

With the consent of both parties, hearings may be conducted entirely paperless with electronic documents being displayed on the screens in the hearing room. The regular rules above apply. Please consult Practice in Trademark Opposition Proceedings and Practice in Section 45 Proceedings for information regarding deadlines and procedures.

V. Issues with electronic evidence

V.1 Transmission Failure

V.1.a Submissions to the Registrar

If there are technical difficulties submitting evidence online using the electronic system, it is the responsibility of the party to either (i) ensure all files and documents are submitted to the Registrar by physical delivery by the deadline to do so, or (ii) to request and obtain an extension of time to submit their evidence electronically.

V.1.b Service on the other party

Parties are responsible for meeting all deadlines and ensuring proper service, as is the case for non-electronic service. Please consult Practice in Trademark Opposition Proceedings and Practice in Section 45 Proceedings for information regarding procedures to seek extensions of deadlines.

This practice notice is intended to provide guidance on the Canadian Intellectual Property Office practice and interpretation of relevant legislation. 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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