Navigating the Changes to Opposition and Section 45 Proceedings

Publication Date: 2019-06-17

Canada's accession to the Singapore Treaty, the Madrid Protocol and the Nice Agreement have resulted in a modernized trademark regime that will help Canadian businesses stay competitive in international markets by giving them an efficient means of protecting their trademarks in various jurisdictions around the world.

Both opposition and section 45 proceedings are mechanisms that help maintain the balance in the marketplace between protecting registered owner's trademarks while ensuring that this is not at the expense of their competitors, of consumers or of the overall good functioning of the marketplace.

This document provides a summary of the changes related to opposition proceedings and section 45 summary cancellation proceedings resulting from the legislative and regulatory amendments as well as the revised and new practice notices which will be coming into force as of  (CIF).

Part 1: Grounds of Opposition

A: Which Grounds Apply?

Diagram 1
Diagram 1
Diagram 1 - Text version

This is a flowchart depicting how the TMOB will proceed with respect to procedural issues in opposition proceedings depending on when the applied for trademark was advertised; before or after the coming into force of the amended Act and the new Regulations. In order to determine how the Board will proceed, the Board will first consider whether the applied for trademark was advertised before (i.e. the coming into force date of the amended Act and new Regulations. If the answer is yes, then for the purposes of assessing statements of opposition, requests for interlocutory rulings and final decisions, the TMOB will apply the old grounds of opposition (i.e. as they are read before ). If the answer is no, then the TMOB will apply the amended Act for all procedural issues and final decisions. In either case, the new Regulations and the new practice notices will apply.

A trademark application advertised before the coming into force of the Trademarks Act, as amended (the new Act) and the new Trademarks Regulations (the new Regulations) must be opposed based on the grounds of opposition as they appeared in the Trade‑marks Act as it read prior to CIF but will otherwise follow the new Act and new Regulations.

A trademark application advertised after CIF must be opposed on the new grounds of opposition and will follow the new Act and the new Regulations.

B: Old vs. New Grounds of Opposition

The new Act removes certain grounds of opposition (i.e. those which relate to the filing claims of an application) and add various new grounds (e.g. bad faith). The following diagram summarizes the grounds of opposition under the Trademarks Act as it read prior to CIF as compared to the grounds of opposition under the new Act.

Diagram 2
Diagram 2
Diagram 2 - Text version

This is a table comparing the old Grounds of Opposition with the New Grounds of Opposition.

  • Section 38(2)(a) corresponds to the same section number. However, it used to say, "The application does not conform to section 30". It now says "The application does not conform to the requirements of s. 30(2) without taking into account if it meets the requirements of s. 30(3)".
  • A new ground of opposition under Section 38(2)(a.1) states, "The application was filed in bad faith"
  • Section 38(2)(b) states, "The trademark is not registrable". The ground and section number stays the same.
  • A new ground of opposition under Section 104 of the Trademarks Regulations states, "The trademark is not registrable because the goods or services specified in the Protocol application are not within the scope of the international registration". This ground applies only to Protocol applications.
  • Section 38(2)(c) states, "The applicant is not the person entitled to registration of the trademark". The ground and section number stays the same.
  • Section 38(2)(d) states, "The trademark is not distinctive". The ground and section number stays the same.
  • A new ground of opposition under Section 38(2)(e) states, "At the filing date of the application in Canada, the application was not using and did not propose to use the trademark in Canada in association with the goods or services specified in the application"
  • A new ground of opposition under Section 38(2)(f) states, "At the filing date of the application in Canada, the applicant was not entitled to use the trademark in Canada in association with those goods or services applied for, at the date the application was filed"

Part 2: Changes to Opposition and Section 45 Proceedings in General

The following table is a summary of the changes to opposition and section 45 proceedings in general. These changes apply as of coming into force for all proceedings as of .

Summary of Changes to Opposition and Section 45 Proceedings
Subject Modification
Correspondence

Prior to CIF: The Regulations set out the requirements for correspondence only for opposition procedures.

Update: To ensure that the same correspondence requirements are in place for both proceedings, the new Regulations provide that a person who corresponds with the Registrar in respect of an opposition or section 45 proceeding must clearly state to which proceeding the correspondence relates.

Statement of Opposition

Prior to CIF: The statement of opposition must be filed in duplicate.

Update: No requirement to file the statement of opposition in duplicate.

Section 45 Notice

Prior to CIF: A Section 45 Notice is issued for all of the goods and services.

Update: A Section 45 Notice can be issued for all or only some of the goods and services.

Forwarding Copies of Documents

Prior to CIF: The Regulations set out the requirements for forwarding copies of documents in opposition proceedings. They do not cover section 45 proceedings.

Update (opposition): The new Regulations provide that a party to an opposition must, after the Registrar has forwarded a copy of the statement of opposition to the applicant, forward to the other party on the same day a copy of any document relating to the opposition proceeding that they send to the Registrar, other than any document that they are otherwise required to serve on the other party.

Update (section 45): The new Regulations provide that once the Registrar has issued a notice in a section 45 proceeding, a copy of any document sent to the Registrar, but not required to be served, must also be forwarded to the other party on the same day.

Address for Service

Prior to CIF: There are no provisions for serving documents outside of Canada because both the applicant and the opponent are required to have an address for service in Canada.

Update: Applicants are no longer required to have an address for service in Canada. An applicant may set out in its counter statement or may file with the Registrar and serve on the opponent a separate notice setting out the name and address in Canada of a person or firm on whom service of any documents may be made with the same effect as if had been served on the applicant. Such notice may also be filed with the Registrar and served on the other party during the course of a section 45 proceeding. The opponent in an opposition proceeding is still required to have an address for service when filing its statement of opposition.

Service

Prior to CIF: The Trade-marks Act as it read prior to CIF and the Regulations set out the service requirements for opposition proceedings. Documents are not required to be served in section 45 proceedings.

Update: The new Regulations clarify service requirements and effective dates of service for opposition proceedings and introduce service requirements for section 45 proceedings. These requirements will also address situations where the necessary information to properly effect service has not been made available.

In order to ensure that documents are properly served, the Registrar will retain the power to require that parties provide proof that the documents were served.

Manner of Service

Prior to CIF: In the absence of consent to service in any other manner, service may be effected by personal service, registered mail, or courier.

Update: The new Regulations include the same manners of service with the addition of the option to serve by the sending of a notice in certain cases. In this regard, if the party seeking to effect service does not have the information necessary to permit them to serve the other party by personal service, registered mail, or courier, they may send a notice to the other party advising that the document to be served has been filed with the Registrar.

Effective Date of Service

Prior to CIF: The effective date of service is the later of two dates – the date of service or the date that the party notifies the Registrar.

Update: The effective date of service is the actual date of service, which is dependent on the manner of service.

Irregular Service

Prior to CIF: An application could be deemed abandoned on the basis that a counter statement was not filed and served even if it was clear that it came to the attention of the person being served.

Update: An application could still be deemed abandoned on the basis that a counter statement was not filed and served. However, under the new Regulations the Registrar may now consider a document validly served if the Registrar determines that it came to the notice of the party being served.

Failure to Submit and Serve

Prior to CIF: An application could be deemed abandoned if an applicant does not file and serve its counter statement or submit its evidence or statement that it does not wish to submit evidence. An opponent's failure to submit evidence or a statement that it does not wish to submit evidence will result in the opposition being deemed to have been withdrawn.

Update: An application can be deemed abandoned if the applicant does not file and serve its counter statement or submit and serve its evidence or statement "in the prescribed circumstances". An opposition can be deemed to be withdrawn if the opponent does not submit and serve either evidence or a statement "in the prescribed circumstances".

Amended Applications

Prior to CIF: The current Regulations prohibit the deletion or amendment of certain claims in an application before and after advertisement.

Update: An applicant who wants to amend or delete claims in its application (eg. proposed use, use in Canada or use and registration abroad) may do so. For the purposes of an opposition to an application advertised before CIF, an application must claim at least one basis of registration to comply with section 30 and to allow the Registrar to assess entitlement pursuant to sections 16(1)-(3) of the Act as it read prior to coming into force.

Amendments/Additional Evidence

Prior to CIF: It is possible to amend a statement of opposition or file additional evidence in an opposition proceeding. However, a party may only make such an amendment or file additional evidence with leave of the Registrar "on such terms as the Registrar deems to be appropriate".

Update: The Registrar must grant leave if it is in the "interests of justice to do so", in reference to the test that is currently set out in case law and applied by the Registrar in determining whether to grant leave. Further, additional evidence must now be served on the other party.

Evidence – opposition

Prior to CIF: Pursuant to the Regulations, the opponent's evidence is governed by section 41, the applicant's evidence is governed by section 42 and the opponent's reply evidence is governed by section 43.

Update: Pursuant to the new Regulations the opponent's evidence is governed by section 50, the applicant's evidence is governed by section 52 and the opponent's reply evidence is governed by section 54.

Evidence – section 45

Prior to CIF: The registered owner of a trademark must furnish its evidence within the three‑month period referred to in section 45(1) of the Trade-marks Act, as it read prior to CIF.

Update: The registered owner must furnish and serve its evidence within the three-month period referred to in section 45(1) of the new Act.

Evidence by Electronic Form and Means

Prior to CIF: The filing of electronic evidence in opposition and section 45 proceedings is currently prohibited.

Update: Subject to the new Act, documents may be provided to the Registrar in electronic form and by electronic means specified by the Registrar. The new Regulations provide that parties are required to keep the original of an affidavit or statutory declaration if a copy is filed. The original affidavit or statutory declaration may be requested by the Registrar.

Extensions of Time – Cooling Off

Prior to CIF: Parties may be granted a cooling off extension up until the filing and serving of the applicant's evidence.

Update: Parties may be granted a cooling off extension up until the filing and serving of written representations (or a statement).

Cross-examination

Prior to CIF: The Registrar may order the cross-examination of an affiant or declarant in an opposition proceeding on the application of any party. It is the responsibility of the party who has conducted the cross-examination to file all documents (i.e. transcripts and responses to undertakings) once the cross-examination has been completed. There is a requirement to return an affidavit or statutory declaration in cases where the affiant or the declarant declines or fails to attend for cross-examination.

Update: On request, the Registrar must order the cross-examination of any affiant or declarant, within the period specified, on an affidavit or statutory declaration that has been submitted to the Registrar in an opposition proceeding. The responsibilities will be split between the parties so that the party conducting the cross-examination will be responsible for the service and filing of the transcript and the party whose affiant has been cross-examined will be responsible for the service and filing of the responses to the undertakings. In cases where the affiant or the declarant fails to attend for cross-examination, the affidavit or statutory declaration will not be returned but instead will not be considered part of the evidence of record.

Written Representations – Opposition

Prior to CIF: The deadline for the filing of written arguments is set by way of notice issued by the Registrar. The Registrar exchanges both parties' written arguments.

Update: After all evidence has been filed, the Registrar will give the parties notice that they may submit and serve written representations sequentially. The time within which the opponent may submit and serve its written representations is two months from the date of the notice. The time within which the applicant may submit and serve its written representations is two months from the effective date of service of the opponent's written representations or of a statement that it does not wish to make written representations. If no such service is effective, the applicant's time runs from the expiry of the opponent's deadline.

Written Representations – Section 45

Prior to CIF: The Registrar gives notice to the requesting party to file written representations within four months of the date of the notice. Once the Registrar receives these written representations, it will issue a notice to the registered owner to file written representations within four months of the date of that notice.

Update: Once the registered owner has furnished and served an affidavit or statutory declaration in response to the Section 45 Notice, the Registrar will issue a notice to the parties that they may submit and serve written representations sequentially. The time within which the registered owner may submit and serve its written representations is two months from the effective date of service of the requesting party's written representations or of a statement that it does not wish to make written representations. If no such service is effective, the registered owner's time runs from the expiry of the requesting party's deadline.

Hearings

Prior to CIF: The Registrar gives notice to the parties in an opposition proceeding that they may request a hearing. In section 45 proceedings, the parties have one month to request a hearing, from the final deadline for the registered owner's written representations. In either proceeding, if one party requests a hearing, the other can make representations.

Update: The Registrar will no longer issue a notice setting a deadline for the parties to request a hearing. The one-month period to request a hearing will be triggered by the expiry of the applicant's or registered owner's deadline for written representations (or statement) or its date of service. Only a party who requests to be heard can make representations. A party's request to be heard may be conditional on the other party also requesting to be heard. If both parties file requests to be heard that are conditional on the other party also requesting to be heard, a hearing will not be scheduled and a decision will be issued based on the written record.

Divisionals

Prior to CIF: Applicants do not have the ability to divide their application into multiple applications.

Update: Filing a divisional application will allow an applicant to move certain goods and services forward (for example, where the opposition concerns only some of the goods or services or where the parties agree that the opposition against some of the goods and services could be settled). If a divisional application is filed during opposition, all actions taken with respect to the original application are deemed to be taken with respect to the divisional up to the date of the request.

Appeals

Prior to CIF: In an appeal to the Federal Court of a decision by the Registrar, new evidence may be brought as of right.

Update: Leave must be sought from the Federal Court to bring new evidence.

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