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 evidence in electronic form and by electronic means.
Relevant legislation and practice notices
This practice notice refers to the following legislation and practice notices:
- Trademarks Act (the Act)
- Trademarks Regulations (the Regulations)
- Practice in Trademark Opposition Proceedings
- Practice in Section 45 Proceedings
On this page
- I Introduction
- II Electronic submission of evidence
- II.1 Acceptable electronic mean of transmission
- II.2 Acceptable electronic mediums
- II.3 Acceptable electronic file formats
- II.4 Naming electronically submitted evidence
- II.5 Effective date of submission
- II.6 Paper copies of evidence
- II.7 Other information
- III Electronic service of evidence
- IV Technical Difficulties
According to section 64(1) of the Act, any document can be provided to the Registrar of Trademarks (the Registrar) in any electronic form and by any electronic means specified by the Registrar. This includes evidence. This practice notice provides information on the electronic mean of transmission, mediums and file formats accepted by the Registrar for submitting evidence electronically in opposition, objection and section 45 proceedings before the Trademarks Opposition Board (TMOB). It also provides guidance on how this evidence can be served electronically on the other party.
II. Electronic submission of evidence
II.1 Acceptable electronic mean of transmission
The Registrar only accepts one electronic mean of transmission for evidence in the context of opposition, objection and section 45 proceedings, and that is through TMOB's E-services. Files submitted through these services may not exceed 100 MB. Files larger than 100 MB must be broken down into smaller files and submitted individually. An account is required to use these services.
II.2 Acceptable electronic mediums
The Registrar accepts evidence submitted on CDs, DVDs or USB Keys.
Only in cases where a file is larger than the maximum allowed by the TMOB's E-services (100 MB), and cannot be broken down into smaller files, 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.3 Acceptable electronic file formats
The following table lists the file formats accepted by the Registrar for the electronic submission of evidence:
|Type of File||Acceptable Electronic File Format||Notes|
|Document||Where possible, files should be searchable.|
|Image||JPEG, TIFF, PNG or GIF||HI-Def where possible. GIF files must be still images.|
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II.4 Naming electronically-submitted evidence
The maximum number of characters for file names is 150 characters.
II.4.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.
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.4.b Other supporting documents
There is no restriction on the naming of other types of documents supporting the evidence filed (e.g. exhibits), as long as the file name contains the trademark application number and a description of the file content.
II.5 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.6 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.7 Other information
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, objection or section 45 proceeding will not be accepted.
II.7.b Retention of affidavits and statutory declarations
Parties must retain the original of all affidavits, statutory declarations or any other supporting documents 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, legibility, or authenticity of the electronic copy of the document, the Registrar may ask for a copy of the original [section 13(2) of the Regulations].
II.7.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:
- throughout the entire document; or
- in the "lead" document, along with a separate pagination scheme preceded by a letter or digit for each related document (e.g., A-1 to A-7, B-1 to B 10, etc.), accompanied by an index.
In cases where the document is scanned from a paper copy, the Registrar will accept a document that has bookmarked the exhibits.
II.7.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 TMOB's E-services 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.
III. Electronic service of evidence
Service of evidence in the context of opposition, objection or section 45 proceedings can be effected in any manner that is agreed to by the parties, including by electronic means such as TMOB's E-services [sections 46(1)(e) and 71(1)(e) of the Regulations]. This option is available regardless of whether the party being served has an address in Canada.
The service of evidence can be effected electronically, so long as the party being served has provided their consent [sections 46(1)(e) and 71(1)(e) of the Regulations].
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 in Halifax at 3:00am (Atlantic Time) is deemed to have been served in Halifax on March 31.
III.4 Notification to the Registrar
The party effecting service must notify the Registrar of the manner by which service was effected and the effective date of service [sections 46(8) and 71(8) of the Regulations]. Where service has been effected by an electronic mean, the notification to the Registrar should clearly indicate the manner of service (e.g. through the TMOB's E-Services or by email) and indicate that the party being served consented to this manner of service. In the absence of consent being clearly indicated in the notification, the Registrar will assume that the party being served agreed to service in this manner unless advised otherwise.
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:
- TMOB's E-services: Copy of the online confirmation automatically generated by the system.
- Email: Copy of sent email (excluding attachments), indicating: i) the name/email address to whom the email was sent; ii) the name/email address from whom the email was sent; and iii) the time and date the email was sent.
- Text: Copy of screenshot showing: i) the name/phone number to whom the text was sent; ii) the name/phone number from whom the email was sent; and iii) the time and date the text was sent.
- Social media: Copy of screenshot showing: i) the name/handle to whom the text was sent; ii) the name/handle from whom the message was sent; and iii) the time and date the text was sent. If the handle does not clearly indicate the name of the party, the Registrar will need proof that the handle and name are from the same party.
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.
IV. Technical Difficulties
IV.1 When submitting evidence through TMOB's E-services
If parties experience technical difficulties while submitting evidence to the Registrar using TMOB's E-services, it remains their responsibility to ensure that the evidence, as well as any supporting document(s), is submitted to the Registrar by the deadline.
Please consult Practice in trademark opposition proceedings and Practice in section 45 proceedings for more information regarding procedures to seek extensions of deadlines.
Parties can inform the TMOB of any technical problem(s) by clicking the "Problem report" link, situated on the home page of the TMOB's E-services, or by sending an email to the TMOB at firstname.lastname@example.org.
IV.2 When effecting service by electronic means
It remains the parties' responsibility to ensure proper service, as is the case for non-electronic service.
IV.3 Plan ahead
Unexpected technological difficulties can occur. In order to avoid any last-minute problems that may arise, it is recommended to plan ahead when using TMOB's E-services. Filing and serving deadlines should be kept in mind and plenty of time should be allowed to resolve of any potential issues.
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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