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Proceedings before the Trademarks Opposition Board and frequently asked questions

From: Canadian Intellectual Property Office

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These frequently asked questions (FAQs) are intended to provide guidance on the Trademarks Opposition Board (TMOB) practice and interpretation of relevant legislation. However, in the event of any inconsistency between this page and the applicable legislation, the legislation must be followed. The provisions of this page are general guidelines only, are not binding in any particular case and are subject to change.

Please note that this page may be updated as CIPO's response to COVID-19 evolves.

Flexibility for clients after the end of designated days

The Registrar recognizes that COVID-19 continues to impact parties before the TMOB and is committed to ensuring that they remain able to obtain reasonable extensions of their deadlines affected by COVID-19.

As communicated by the Registrar on CIPO's website, as the restrictions related to COVID-19 gradually eased, the Registrar decided not to extend the period of time for which days were designated under subsection 66(1) of the Trademarks Act (the Act). Therefore, any deadlines set in the Act, Trademarks Regulations (the Regulations) or by the Registrar in a proceeding before the TMOB that fell between and were extended to .

Question #1
What is the best way to correspond with the Registrar now that service has resumed?

A: Our online solutions are available 24/7. Parties before the TMOB, or their appointed agents, are strongly encouraged to use CIPO's trademarks opposition e-services to file any documents with the TMOB to avoid delays.

Please note that since , requests under subsection 47(2) of the Act can be filed online. It is still also possible to submit these requests in hard copy pursuant to the correspondence procedures.

Question #2 – New
If the COVID-19 pandemic affects my ability to act by a deadline, will I be given additional time?

A: If you are able to act on or before the deadline, we encourage you to do so. If the COVID-19 pandemic is preventing or interfering with your ability to act by a deadline, you can request an extension of time under section 47 of the Act, for a period between three to six months. The Registrar will take into account the disruption caused by COVID-19 when considering extension of time requests.

When seeking an extension of time based on exceptional circumstances related to COVID-19, your request to the Registrar will need to set out the following information:

The Registrar may also use his discretion under subsection 47(1) of the Act to extend deadlines on his own initiative if it is in the interests of justice to do so.

TMOB will review this approach on a quarterly basis.

Question #3 – New
What if the other side does not consent to the extension of time? Can I still request an extension of time? What do I need to include in my extension request?

A: If the other party does not consent to the extension of time, your request to the Registrar will need to set out the following information:

In such cases, the Registrar will generally grant an extension of time between three to six months.

The Registrar may also use his discretion under subsection 47(1) of the Act to extend deadlines on his own initiative if it is in the interests of justice to do so.

TMOB will review this approach on a quarterly basis.

Question #4 – New
If the COVID-19 pandemic continues to affect my ability to act by a deadline, can I request a further extension of time?

A: For subsequent request to the Registrar, you will need to demonstrate and set out sufficient reasons to warrant an additional extension of time. The Registrar will generally expect parties to take all steps they reasonably can within an extended deadline.

Subsequent extensions of time will require further reasons or an explanation of why the circumstances existing at the time of the first extension request continue to prevent a party from meeting its deadline or an evolution of the reasons stated in the first extension request.

If you have the consent of the other party, please also include:

If you do not have consent of the other party, please also include:

The Registrar may also use his discretion under subsection 47(1) of the Act to extend deadlines on his own initiative if it is in the interests of justice to do so.

TMOB will review this approach on a quarterly basis.

Question #5 – New
What if my deadline has already expired? Is the disruption caused by COVID sufficient to obtain a retroactive extension of time pursuant to section 47(2) of the Act?

A: Section 47(2) of the Act requires that an extension only be granted if the prescribed fee is paid and the Registrar is satisfied that the failure to meet the deadline was not reasonably avoidable. Given the amount of time that has elapsed since COVID-19 began to disrupt businesses, the Registrar will require more detailed reasons beyond the disruption of business caused by COVID-19 in order to find that the failure to meet the deadline was not reasonably avoidable. Please also refer to questions #2, 3 and 4.

Question #6 – New
I have a cross-examination that requires or could require the deponent to travel; can it be conducted via videoconference instead?

A: TMOB has updated its practice notice as it relates to cross-examination and considers videoconference to be the preferred method of cross-examination.

While agreement on the preferred method of cross-examination should be sought between the parties, in the absence of agreement, the Registrar will order that cross-examination take place by videoconference unless the balance of convenience does not favour this method. This update to the practice notice has no effect on previous rulings issued by the Registrar, however, all new, pending or reconsideration requests will be examined in light of this update. Please consult Section VII of the TMOB practice notice for additional details.

Given that the preferred method of cross-examination is by videoconference the benchmark extension of time has been reduced to two months (previously four months). Furthermore, extension of time beyond the benchmark extension, to allow for the scheduling of in-person cross-examination after travel restrictions ease, will no longer be considered an exceptional circumstance.

Question #7 – New
Is the TMOB scheduling hearings? What about in person hearings?

A: Yes, teleconference and videoconference hearings conducted using third-party virtual meeting platforms are being scheduled. The hearing calendar is available online approximately 90 days in advance.

At this point in time, the TMOB does not plan to schedule or conduct hearings in person before Spring 2021. TMOB will continue to schedule hearings via teleconference and videoconference for the foreseeable future (this approach will be reviewed on a quarterly basis). Therefore, parties that are waiting for a hearing are encouraged to inform the TMOB of their agreement to conduct their hearing via teleconference or videoconference by sending an email to ised.cipohearing-opicaudience.isde@canada.ca.

Parties are also encouraged to advise the Registrar as soon as possible if a hearing is no longer required. For cases where a hearing has been scheduled and both parties advise the Registrar that a hearing is no longer required, a non-hearing decision will be issued.

Question #8 – New
I have a hearing that requires simultaneous translation, how will TMOB proceed?

A: Hearings requiring simultaneous translation will be held by videoconference using third-party virtual meeting platforms. Detailed instructions will be made available to the participants.

Question #9 – New
What will happen if a technical difficulty arises during my teleconference or videoconference hearing?

A: In the first few minutes of the hearing, the Member or Hearing Officer will canvass participants for their email addresses and telephone numbers where they can be reached for the duration of the hearing. If there are technical issues during the course of the hearing, the Member or Hearing Officer will contact each participant by email and/or telephone to indicate how the hearing will proceed (for example, after a short adjournment or using the telephone number provided for audio only).

Question #10
Will the Registrar be waiving fees for extensions of time based on COVID-19?

A: At this point, the Registrar has not waived fees for extensions of time based on COVID-19.

Question #11
Is the information on the Canadian Trademarks Database regarding my proceeding before the Opposition Board up to date?

A: CIPO is open for business and continues to process correspondence, and updates to the Canadian Trademarks Database are, in principle, occurring weekly.

Question #12
I have an upcoming evidence deadline and I am unable to obtain a certified copy of a file or registration from the Registrar or have an affidavit sworn, should I file printouts from the Canadian Trademarks Database or an unsworn affidavit?

A: If you are unable to meet an evidence deadline due to COVID-19 including the obtaining of certified copies or sworn affidavits, an extension of time should be sought in accordance with questions #2, 3 and 4.

On , the Canadian Intellectual Property Office's Client Service Centre resumed its intellectual property document order service.

CIPO requires that affidavits filed as evidence in opposition or section 45 proceedings be sworn. We note that some jurisdictions have modified the rules for swearing and commissioning affidavits in view of the disruption caused by the COVID-19 pandemic. CIPO will maintain its practice of accepting affidavits and statutory declarations provided they are in compliance with requirements of the jurisdiction in which they were sworn.

Question #13
What transactions can be submitted online?

A: Currently, users are able to submit online all of the main transactions related to opposition and section 45 proceedings. This includes:

Question #14
What type of transactions can be submitted through General Correspondence tab?

A: Users are able to submit the following transactions via the General Correspondence tab:

Please note that, due to possible privacy and confidentiality implications, and to protect sensitive financial information (for example, credit card numbers), no document requiring a fee payment form should be submitted through the General Correspondence tab. Accordingly, fee payment forms that will be attached to documents submitted through the General Correspondence tab for the purpose of opposition or section 45 proceedings will not be processed by the Registrar.

Question #15
I have experienced a technical problem while submitting a transaction online, what should I do?

A: If you have experienced any type of technical problem while submitting a transaction online, please click the "Report a Problem" link. This link will bring you to a page where you will be able to fill out a form to inform us about the type of problem(s) that you have encountered and upload screenshots for clarification.

Archived COVID-19 FAQs

Archived: Proceedings before the Trademarks Opposition Board and frequently asked questions

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