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Frequently asked questions – Resumed service after COVID-19 interruptions - Proceedings before the Trademarks Opposition Board

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.

Question #1

What is the best way to correspond with the Registrar?

A: Filing online is the fastest and easiest way to correspond with the Registrar. Parties before the TMOB, or their appointed agents, are strongly encouraged to use the TMOB's E-services to file any documents whenever possible, in order to ensure for their timely receipt and processing. Our online solutions are available 24/7.

Question #2 – New!

What should I do if I encounter a technical problem while corresponding with the Registrar using TMOB's E-services?

A: If parties before the TMOB, or their appointed agents, experience technical difficulties while using the TMOB's E-services, it remains their responsibility to ensure that all deadlines are met. It also remains their responsibility to ensure proper service, as is the case for non-electronic service.

In order to avoid any last-minute problems that may arise, it is recommended to plan ahead when corresponding with the Registrar. Filing deadlines should be kept in mind and plenty of time should be allowed to resolve of any potential issues.

Parties can also 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 ic.cipotmobrec@canada.ca.

Question #3
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. (last reviewed in February 2021)

Question #4
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, if the Registrar is satisfied that it is in the interests of justice to do so, an extension of time between three to six months will generally be granted. 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. (last reviewed in February 2021)

Question #5
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. (last reviewed in February 2021)

Question #6
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 #3, 4 and 5.

Question #7
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 now 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 is now of two 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 #8 – New!
Are there any examples of best practices for conducting virtual cross-examinations?

A: Literature on the subject is abundant. Following are a few examples of practices taken from it, to facilitate the conduct of a virtual cross-examination:

It should be noted that in general, the Registrar does not specify how cross-examinations should be conducted. Only in situations where they cannot be arranged by mutual agreement that the Registrar will, on request, set the terms of them, in accordance with section 56(2) of the Trademarks Regulations.

Question #9
Is the TMOB scheduling hearings? What about in person hearings?

A: Yes, the TMOB is still scheduling hearings. Building on its recent positive experience conducting hearings by videoconference, and as part of TMOB's modernization and virtual shift, as of June 2021, hearings will be scheduled by videoconference by default. The TMOB will consider scheduling hearings by teleconference by exception when requested. For questions related to the hearing schedule, parties are invited to communicate with the TMOB by sending an email to ised.cipohearing-opicaudience.isde@canada.ca. The hearing calendar remains available online approximately 90 days in advance. At this point in time, the TMOB is not expecting to resume in-person hearings in the near future. Parties are 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 #10
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 #11
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 #12 – New!
What can I do ahead of a virtual hearing to help improve its conduct and render my participation in the hearing as effective as possible?

A: Parties before the TMOB, or their appointed agents, are encouraged to: 

Question #13
Will the Registrar be waiving fees for extensions of time based on COVID-19?

A: No, the Registrar is not waiving fees for extensions of time based on COVID-19.

Question #14
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. Please note that as indicated in the disclaimer contained on CIPO's website, CIPO "does not warrant the accuracy of the information contained within this database. Recent updates, corrections or changes may not be included. (…) The database is for information purposes only. Business decisions should not be made based on this search alone."

Question #15 – Updated
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: CIPO's Client Service Centre offers an intellectual property document order service through which parties before the TMOB, or their appointed agents, can obtain certified copies of files or registrations. However, please note that it is common practice for the Registrar to exercise its discretion and consult the Canadian Trademarks Database to confirm that the registrations or applications pleaded by an opponent with respect to a section 12(1)(d) or entitlement to registration ground of opposition are in good standing. This practice, however, does not extend to checking the Canadian Trademarks Database to confirm registrations or applications relied upon as part of state of the Register evidence.

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.

If you are unable to meet an evidence deadline due to COVID-19, including for the obtaining of sworn affidavits, an extension of time should be sought in accordance with questions #3, 4 and 5.

Question #16
What transactions can be submitted online through the TMOB's E-services?

A: Currently, users are able to submit the following transactions related to opposition and section 45 proceedings:

Question #17 – New!
Have there been any enhancements or additions to CIPO's Trademarks Opposition Board E-services lately?

A: Yes, since Fall 2020, it is possible, provided that the other party has agreed to service in this manner, to serve documents in the context of both opposition and s.45 proceedings through the TMOB's E-services.

Question #18
What type of transactions can be submitted through the General Correspondence tab?

A: Users are able to submit the following transactions through 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.

Archived COVID-19 FAQs

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

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