Practice in Trademark Opposition Proceedings

In effect as of March 31, 2009

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

This practice notice replaces the practice notice entitled Procedure before the Trademarks Opposition Board as of October 1, 2007, published in the Trademarks Journal on September 26, 2007.

NOTE: Opposition proceedings relating to an application for the registration of a trademark advertised in the Trademarks Journal before October 1, 2007 will be conducted in accordance with Rules 39, 41 and 42 of the Trade-marks Regulations, previously the Trade-marks Regulations (1996), as they read on September 30, 2007 Trade-marks Regulations, S.O.R./96-195, s. 34 – 47 (September 30, 2007). See also Trade-marks Regulations, S.O.R./2007-91, s. 13.



I — Correspondence

Correspondence addressed to the Registrar of Trademarks (the "Registrar") in respect of an opposition proceeding must follow Rules 3 through 7 of the Trade-marks Regulations (the "Regulations") and the Updated Correspondence Procedures Practice Notice. In particular, all correspondence relating to an opposition proceeding must:

  1. be clearly marked "ATTENTION OPPOSITION BOARD";
  2. include the name of the applicant;
  3. identify the application number; and
  4. identify the trademark.

(Rules 7(1) and 35 of the Regulations)

After the Registrar has forwarded a copy of the statement of opposition to the applicant, and with the exception of written arguments filed pursuant to Rule 46(3) of the Regulations, a party corresponding with the Registrar must send to the other party, a copy of all correspondence sent to the Registrar relating to the opposition (Rule 36 of the Regulations). With respect to written arguments, only a copy of the cover letter to the written argument as filed with the Registrar should be sent to the other party.


II — Service on the other Party to the Opposition

Pursuant to Rule 37(1) of the Regulations, any statement or other material required to be served on a party in an opposition proceeding under s. 38 of the Trade-marks Act, R.S.C. 1985, c. T-13 (the "Act") or under the Regulations may be served by personal service, registered mail, courier or in any other manner with the consent of the other party or its trademark agent. To comply with Rule 37(6) of the Regulations, and in order for the Registrar to determine the effective date of service, a party's correspondence filed with the Registrar must clearly indicate:

  1. the manner of service that has been employed; and
  2. the effective date of service as prescribed in Rule 37 of the Regulations.

III — Joint Opponents

A statement of opposition may name any number of persons jointly as opponents.

Where an extension of time to oppose is granted in the name of one person, a subsequently filed statement of opposition may name that person jointly as opponent along with any number of other persons, whether or not the other person was named in the initial request for the extension of time to oppose.

An opponent, whether a single person or several persons, may only appoint a single trademark agent.


IV — Review of the Statement of Opposition

The Registrar's responsibility under s. 38(4) and (5) of the Act is only to determine whether the opposition raises one substantial issue for decision and not to ensure that all grounds are properly pleaded.

It is the responsibility of the opponent to ensure that each ground of opposition is properly pleaded. The failure to do so may result in a ground of opposition not being considered [see Massimo De Berardinis v. Decaria Hair Studio (1984), 2 C.P.R. (3d) 319 (TMOB)].


IV.1 — Interlocutory Rulings

Before filing and serving a counter statement, the applicant may request an interlocutory ruling to strike all or any portion of the opponent's pleadings [see Novopharm Limited v. AstraZeneca AB (2002), 21 C.P.R. (4th) 289 at 294 (F.C.A.)]. Generally, a request for an interlocutory ruling has no effect on any outstanding deadlines (see below at IV.1.1).

The Registrar will generally give the opponent the opportunity to reply and/or request leave to file an amended statement of opposition under Rule 40 of the Regulations in response to the applicant's objections.

Once evidence has been filed by an opponent in accordance with Rule 41(1) of the Regulations, issues concerning striking all or any portion of the opponent's pleadings will only be considered at the decision stage [see Novopharm Limited, supra].


IV.1.1 — Effect on the Filing of Counter Statement

Unless an applicant specifically requests an extension of time under s. 47 of the Act for filing its counter statement in view of its pending request for an interlocutory ruling, a request for an interlocutory ruling will have no effect on any outstanding deadlines, including the applicant's deadline prescribed under Rule 39 of the Regulations for filing its counter statement. The Registrar will generally grant an applicant a one month extension of time from the date of the Registrar's interlocutory ruling for the applicant to file and serve its counter statement in cases where the applicant specifically makes such a request under s. 47 of the Act. The Registrar will generally grant an applicant's request for a one month extension of time from the date of the Registrar's interlocutory ruling within which to file its counter statement either before or after and in addition to granting the applicant:

  • up to a maximum benchmark of nine months, on consent, amounting to a cooling-off period, as detailed below at V.1.1; and/or
  • up to a maximum benchmark of two months as detailed below at V.1.2.

A trademark application is deemed abandoned under s. 38(7.2) of the Act if the applicant does not file and serve a counter statement within the time prescribed by Rule 39 of the Regulations.


V — Extensions of Time

All requests for an extension of time pursuant to s. 47(1) of the Act must:

  1. be accompanied by the prescribed fee as required by Rule 12 of the Regulations and Item 9 of the Tariff of Fees; and
  2. contain sufficient reasons to satisfy the Registrar that the circumstances justify an extension of time.

The Registrar considers that there is no authority to grant an extension of time pursuant to s. 47(1) of the Act if the request is not accompanied by payment in full of the prescribed fee. Requests for extensions of time filed without payment in full of the prescribed fee will not be treated and the requestor will be so advised.

When an initial extension of time is being requested to file a statement of opposition, the date the trademark application was advertised in the Trademarks Journal should be specified by the opponent.


V.1 — Extensions of Time – General Benchmarks

Section 47 of the Act is discretionary, allowing the Registrar to grant extensions of time fixed by the Act or prescribed by the Regulations if the Registrar is satisfied that the facts justify the need for an extension of time [see Sandhu Singh Hamdard Trust v. Canada (Register of Trademarks) (2007), 62 C.P.R. (4th) 245 (F.C.A.), affirming 47 C.P.R. (4th) 373 (F.C.T.D.)]. The following maximum benchmarks have been established by the Registrar in order to provide guidance, transparency and fairness with respect to the manner in which the Registrar will generally exercise discretion under s. 47 of the Act with respect to the granting of extensions of time at each stage of opposition proceedings. These benchmarks are detailed below.

All requests for an extension of time will be considered by the Registrar according to whether the party requesting the extension of time is seeking to extend the initial time limit fixed by the Act or prescribed by the Regulations or seeking to extend a deadline for which an extension of time has already been granted.

With respect to extensions of time for filing evidence, the Registrar will also consider whether the opposition proceeding concerns a trademark application advertised in the Trademarks Journal on or after October 1, 2007 or before October 1, 2007.

The Registrar will only consider one request for an extension of time up to each of the maximum benchmarks detailed below. Accordingly, the Registrar will not grant multiple requests for extensions of time, even where such multiple requests amount to an extension of time within or up to the respective maximum benchmark.

As a transitional measure in cases where the Registrar has already granted the applicant or the opponent one or more extensions of time at a particular stage of the opposition proceeding including granting an extension of time on the basis of exceptional circumstances under the Practice Notice entitled Procedure before the Trademarks Opposition Board as of October 1, 2007:

  • the Registrar will generally not grant the applicant or opponent any further extensions of time at that particular stage of the opposition proceeding under the Registrar's benchmarks for maximum extensions of time as detailed below under V.1.2., with the exception of the maximum benchmark of nine months, on consent, amounting to a cooling-off period as detailed below under V.1.1.1 and V.1.1.2.

V.1.1 — Extensions of Time Amounting to a Cooling-off Period

Statistically, the vast majority of opposition cases settle before the Registrar issues the final decision and the best resolution in any dispute is often a settlement reached by the parties involved. Accordingly, in an effort to encourage settlement and mediation, the Registrar will generally grant each party one extension of time up to a maximum benchmark of nine mont hs, on consent, which may be requested by the opponent either before the filing of its statement of opposition or its Rule 41(1) evidence and by the applicant either before the filing of its counter statement or its Rule 42(1) evidence. The Registrar considers that the practice of granting the parties two extensions of time amounting to the possibility of an eighteen month cooling-off period should provide most parties with a reasonable period of time in which to pursue and finalize settlement of the trademark opposition. Accordingly, the Registrar will not generally grant the parties extensions of time in addition to these two nine month extensions of time for the parties to negotiate or mediate the trademark opposition at any other stage of the opposition proceeding. Accordingly, if the parties fail to settle the opposition proceeding within the cooling-off period, the parties must carry-on with the opposition proceeding and comply with the legislative and regulatory requirements whether or not the parties are continuing their settlement negotiations and/or mediation of the opposition.


V.1.1.1 — Opponent's extension of time of nine months amounting to a cooling-off period prior to filing of the statement of opposition or the opponent's Rule 41(1) evidence

The Registrar will generally grant the opponent one extension of time up to a maximum benchmark of nine months, on consent, amounting to a cooling-off period to allow the parties to pursue settlement negotiations and/or mediation of the opposition either:

  1. Statement of Opposition: Prior to the expiration of either the time fixed by the Act or the time granted by the Registrar by way of an extension of time for an opponent to file a statement of opposition (see V.1.2 below). In cases where the Registrar grants an opponent up to the maximum benchmark of nine months, on consent, amounting to a cooling-off period prior to filing the statement of opposition, the Registrar will also generally grant the opponent an extension of time up to the three month maximum benchmark as specified under V.1.2. for the opponent to file its statement of opposition.

    OR

  2. Rule 41(1) Evidence: Prior to the expiration of either the time fixed by Rule 41(1) of the Regulations or the time granted by the Registrar by way of an extension of time for an opponent to file its evidence or a statement that it does not wish to submit evidence under Rule 41(1) of the Regulations. The Registrar will only grant the opponent up to a maximum benchmark of nine months, on consent, amounting to a cooling-off period prior to the filing of the opponent's evidence in cases where the opponent has not already been granted up to a maximum benchmark of nine months, amounting to a cooling-off period prior to the filing of the opponent's statement of opposition as detailed above under paragraph (a).

    In cases where the Registrar grants an opponent up to the maximum benchmark of nine months amounting to a cooling-off period prior to the filing of the opponent's evidence or statement under Rule 41(1) of the Regulations, the Registrar will also generally grant the opponent an extension of time up to the respective maximum benchmark as specified under V.1.2 for the opponent to file its Rule 41(1) evidence or statement that it does not wish to submit evidence.


V.1.1.2 — Applicant's extension of time amounting to a cooling-off period prior to filing the counter statement or the applicant's Rule 42(1) evidence.

The Registrar will generally grant the applicant one extension of time up to a maximum benchmark of nine months, on consent, amounting to a cooling-off period to allow the parties to pursue settlement negotiations and/or mediation of the opposition either:

  1. Counter Statement: Prior to the expiration of either the time prescribed by the Regulations or the time granted by the Registrar by way of an extension of time for an applicant to file a counter statement (see V.1.2. below). In cases where the Registrar grants an applicant up to the maximum benchmark of nine months, on consent, amounting to a cooling-off period prior to filing the counter statement, the Registrar will also generally grant the applicant an extension of time up to the maximum benchmark of two months as specified under V.1.2. for the applicant to file its counter statement.

    OR

  2. Rule 42(1) Evidence: Prior to the expiration of either the time fixed by Rule 42(1) of the Regulations or the time granted by the Registrar by way of an extension of time for an applicant to file its evidence or a statement that it does not wish to submit evidence under Rule 42(1) of the Regulations. The Registrar will only grant the applicant up to a maximum benchmark of nine months, on consent, amounting to a cooling-off period prior to the filing of the applicant's evidence in cases where the applicant has not already been granted up to a maximum benchmark of nine months, amounting to a cooling-off period prior to the filing of the applicant's counter statement as detailed above under paragraph (a).

    In cases where the Registrar grants an applicant up to the maximum benchmark of nine months amounting to a cooling-off period prior to the filing of the applicant's evidence or statement under Rule 42(1) of the Regulations, the Registrar will also generally grant the applicant an extension of time up to the respective maximum benchmark as specified under V.1.2 for the applicant to file its Rule 42(1) evidence or statement that it does not wish to submit evidence.


V.1.2 — The Registrar's Benchmarks for Maximum Extensions of Time

Following are the Registrar's benchmarks for the maximum extensions of time generally granted under s. 47 of the Act:

STATEMENT OF OPPOSITION


Request to extend the initial time limit prescribed by the Act: three months with sufficient reason(s). *

Request to extend a deadline for which an extension of time has already been granted by the Registrar under s. 47 of the Act: No request for any further extensions of time will generally be granted. *


* The Registrar may also generally grant the opponent one extension of time up to a maximum benchmark of nine months, on consent, amounting to a cooling-off period to allow the parties to pursue settlement negotiations and/or mediation either prior to the filing of the statement of opposition or the opponent's evidence under Rule 41(1). The Registrar's practice with respect to extensions of time amounting to a cooling-off period is detailed above at V.1.1 Extensions of Time Amounting to a Cooling-off Period.

COUNTER STATEMENT


Request to extend the initial time limit prescribed by the Regulations: two months with sufficient reason(s). *

Request to extend a deadline for which an extension of time has already been granted by the Registrar under s. 47 of the Act: No request for any further extensions of time will generally be granted. *


* The Registrar may also generally grant the applicant one extension of time up to a maximum benchmark of nine months, on consent amounting to a cooling-off period to allow the parties to pursue settlement negotiations and/or mediation either prior to the filing of the counter statement or the applicant's evidence under Rule 42(1). The Registrar's practice with respect to extensions of time amounting to a cooling-off period is detailed above at V.1.1 Extensions of Time Amounting to a Cooling-off Period.

The Registrar's practice with respect to interlocutory rulings and the effect on the filing of the applicant's counter statement is detailed above at IV.1 and IV.1.1.

Evidence under rules 41(1) and 42(1) of the regulations


Request to extend the initial time limit prescribed by the Regulations:

  1. In the case of an opposition relating to a trademark application advertised in the Trademarks Journal on or after October 1, 2007:
    • three months with sufficient reason(s) and the other party's consent. *
  2. In the case of an opposition relating to a trademark application advertised in the Trademarks Journal before October 1, 2007:
    • six months with sufficient reason(s) and the other party's consent. *

Request to extend a deadline for which an extension of time has already been granted by the Registrar under s. 47 of the Act: No request for any further extensions of time will generally be granted. *


* The Registrar may also generally grant the opponent/applicant one extension of time up to a maximum benchmark of nine months, on consent, amounting to a cooling-off period to allow the parties to pursue settlement negotiations and/or mediation only in cases where the opponent/applicant, as the case may be, has not already been granted an extension of time up to a maximum benchmark of nine months, amounting to a cooling-off period for filing its statement of opposition/counter statement as detailed above at V.1.1.1 and V.1.1.2. The Registrar's practice with respect to extensions of time amounting to a cooling-off period is detailed above at V.1.1 Extensions of Time Amounting to a Cooling-off Period.

The Registrar's practice with respect to cross-examination and the effect on the filing of evidence is detailed below at IX.1.

Evidence under rule 43 of the regulations


Request to extend the initial time limit prescribed by the Regulations: four months with sufficient reason(s) and the applicant's consent.

Request to extend a deadline for which an extension of time has already been granted by the Registrar under s. 47 of the Act: No request for any further extensions of time will generally be granted.

The Registrar's practice with respect to cross-examination and the effect on the filing of evidence is detailed below at IX.1.

WRITTEN ARGUMENTS


Request to extend the initial time limit prescribed by the Regulations: four months with sufficient reason(s) and the other party's consent.

Request to extend a deadline for which an extension of time has already been granted by the Registrar under s. 47 of the Act: No request for any further extensions of time will generally be granted.

REQUESTING A HEARING


No request for an extension of the time will generally be granted to the parties to request to be heard in accordance with Rule 46(4) of the Regulations.

V.2 — Retroactive Extensions of Time (s. 47(2) of the Act)

No request for a retroactive extension of time pursuant to s. 47(2) of the Act will be granted unless the party seeking the retroactive extension of time supports the request with sufficient facts for the Registrar to be satisfied that the failure of the party to meet its deadline or apply for an extension within the time limit was not reasonably avoidable [see Kitchen Craft Connection Ltd. v. Canada (Registrar of Trade Marks) (1991), 36 C.P.R. (3d) 442 (F.C.T.D.)].

The Registrar considers that there is no authority to grant a retroactive extension of time pursuant to s. 47(2) of the Act if the request is not accompanied by payment in full of the prescribed fee. Requests for retroactive extensions of time filed without payment in full of the prescribed fee will not be treated and the requestor will be so advised. The Registrar will not grant a retroactive extension of time pursuant to s. 47(2) of the Act in respect of a particular stage of an opposition proceeding if the proceeding has advanced to a subsequent stage.

V.3 — Extensions of Time beyond the Benchmark – "Exceptional Circumstances"

The Registrar will not generally grant extensions of time beyond the maximum benchmarks detailed above under V.1.2 The Registrar's Benchmarks for Maximum Extensions of Time. The Registrar will in some cases grant extensions of time beyond the maximum benchmark on a case by case basis, and only if the Registrar determines, on the facts of the particular case, given the stage of the proceeding, that the party has demonstrated exceptional circumstances justifying the further extension of time. The Registrar will also have regard to the decision in Anheuser-Busch Inc. v. Carling O'Keefe Breweries (1982), 69 C.P.R. (2d) 136 (F.C.A.) in determining whether to grant further extensions of time beyond the maximum benchmark, since the Registrar considers that there is no authority to stay opposition proceedings.

All requests for an extension of time beyond the maximum benchmark should be clearly marked "EXCEPTIONAL CIRCUMSTANCES /EXTENSION REQUEST."

A request for an extension of time based on exceptional circumstances must be supported by a full and frank disclosure of all of the relevant facts. It is very unlikely that the Registrar will consider a request for an extension of time favourably if the party relies on substantially the same set of circumstances as those used to support an earlier request for an extension of time. The extent of information needed in support of a request for an extension of time will increase with every additional request filed. The onus remains on the party requesting the extension of time to satisfy the Registrar that the circumstances justify a further extension of time.

Following are examples of what could amount to an exceptional circumstance, satisfying the Registrar that the circumstances justify a further extension of the time fixed by the Act or prescribed by the Regulations, depending upon the facts of the particular case, the stage of the opposition proceeding, and the diligence with which the parties have advanced the opposition.


V.3.1 — Co-pending Opposition Proceedings

If there are co-pending opposition proceedings in Canada between the same parties for related trademarks, the Registrar may grant a further extension of time beyond the benchmark depending on the facts of the co-pending opposition proceedings and in particular, how long the cases have been pending and the status of the co-pending oppositions. For example, the Registrar may grant an extension of time beyond the benchmark to synchronize deadlines between the proceedings for completing the same requirement.


V.3.2 — Recent Change in a Party's Instructing Principal or Trademark Agent

Depending on the stage of the opposition and if there has been a very recent change in the party's instructing principal or trademark agent, the Registrar may grant an extension of time beyond the benchmark allowing the party a reasonable period of time to enable a new trademark agent or instructing principal to become familiar with the file.


V.3.3 — Circumstances Beyond the Control of the Person Concerned

Examples of factors that could amount to exceptional circumstances beyond the control of the person concerned include illness, accident, death, bankruptcy or other serious and unforeseen circumstances.


V.3.4 — Assignment

There has been a recent assignment of the trademark that is either the subject of opposition or a trademark application or registration being relied upon by the opponent in the opposition proceeding.


V.3.5 — Revised Application

A revised application for the trademark that is the subject of the opposition has been filed with the Registrar and the revision, if accepted, would put an end to the opposition proceeding or substantially change the nature of the opposition proceedings.


V.3.6 — Finalizing Settlement

Either the applicant or the opponent may request one further extension of time beyond the benchmark if the parties require limited additional time in order to fully finalize and complete settlement negotiations or mediation. While this request can be made by either party, at any time, the Registrar will generally only grant one extension of time during the course of an opposition proceeding up to a maximum period of three months on consent for the parties to fully finalize and complete settlement negotiation.

Once either the applicant or the opponent has been granted this extension of time beyond the maximum benchmark to finalize settlement negotiations, the Registrar will not generally grant a further extension of time for the parties to finalize settlement negotiations to any party at any time during the opposition proceeding.


VI — Evidence

Evidence submitted in respect of an opposition proceeding may not be transmitted by facsimile (Rule 3(9) of the Regulations).

In general, the rules of evidence which are applicable in the Federal Court of Canada are applicable in opposition proceedings.

If the parties are in agreement that a particular form of evidence should be accepted, the Registrar will generally accept it.

In general, rulings on evidentiary matters will only be made at the decision stage and not during the course of an opposition proceeding.


VI.1 — Consequences for Failure to File Evidence

An application is deemed abandoned under s. 38(7.2) of the Act if the applicant does not submit either evidence or a statement that the applicant does not wish to file evidence. Similarly, an opposition is deemed to be withdrawn under s. 38(7.1) of the Act if the opponent does not submit either evidence or a statement that the opponent does not wish to file evidence. The Registrar considers that a party submitting a statement that it will not be filing evidence in accordance with Rule 41 or Rule 42 of the Regulations does not preclude that party from later seeking leave to file evidence pursuant to Rule 44(1) of the Regulations, although such request will only be granted in appropriate circumstances. (See below.)


VII — Leave pursuant to Rules 40 and 44(1) of the Regulations

Leave to amend a statement of opposition or counter statement or to file additional evidence will only be granted if the Registrar is satisfied that it is in the interests of justice to do so having regard to all the surrounding circumstances including:

  1. the stage the opposition proceeding has reached;
  2. why the amendment was not made or the evidence not filed earlier;
  3. the importance of the amendment or the evidence; and
  4. the prejudice which will be suffered by the other party.

Requests for leave to amend a statement of opposition or counter statement must be accompanied by an amended statement of opposition or counter statement and the amendments should be clearly indicated.

Requests for leave to file additional evidence must be accompanied by at least a draft and preferably a sworn or declared version of the affidavit or statutory declaration which is proposed to be filed.

Once written arguments have been requested pursuant to Rule 46(1) of the Regulations, no request for leave to file additional evidence will be considered unless it is specifically agreed that the affiant or declarant will be made available for cross-examination at the request of the other party.

A copy of a request for leave pursuant to Rule 40 or Rule 44(1) of the Regulations, together with a copy of the amended statement of opposition or counter statement or the affidavit or statutory declaration which is proposed to be filed, must be sent to the other party. In general, if the other party raises no objection to the request for leave, it will likely be granted.

In general, a grant of leave under Rule 40 or Rule 44(1) of the Regulations will have no effect on any outstanding deadlines.


VIII Amended Applications

Letters requesting that an application be amended must specifically identify the changes being made to the application. For example, wares to be deleted from an application should be specifically identified in the letter. The provision of an amended application clearly identifying the proposed amendments to the application would generally be of assistance to the Registrar.


IX — Cross-examination

The applicant's request for a cross-examination order has no effect on the prescribed deadline for the applicant to file and serve its Rule 42(1) evidence. Accordingly, cross-examination orders will generally specify that they have no effect on any outstanding deadlines. However, if an applicant's request for a cross-examination order is made within two months from the completion of all the Rule 41(1) evidence, the applicant may request an extension of time under s.47 of the Act for filing its Rule 42(1) evidence or statement and asking that the extension of time only begin to run from the completion of the cross-examination. If such an extension of time is requested, the Registrar will generally issue a cross-examination order granting the applicant an extension of time of four months from the completion of the cross-examination to file and serve its Rule 42(1) evidence or statement. With the exception of opposition proceedings relating to an application for the registration of a trademark advertised in the Trademarks Journal before October 1, 2007, please note that Rule 42(1) of the Regulations prescribes that the applicant's evidence or statement must be filed within four months from completion of all the Rule 41(1) evidence.

In opposition proceedings relating to an application for the registration of a trademark advertised in the Trademarks Journal before October 1, 2007, please note that Rule 42(1) of the Regulations, previously the Trade-marks Regulations (1996), as it read on September 30, 2007 continues to apply and prescribes that the applicant's evidence or statement must be filed within one month from completion of all the Rule 41(1) evidence. In such cases, if the applicant has requested and is granted an extension of the time prescribed by Rule 42(1) of the Regulations, previously the Trade-marks Regulations (1996), as it read on September 30, 2007, the applicant may later request an order for cross-examination within two months from the completion of all the Rule 41(1) evidence and specifically ask that the extension of time previously granted be amended to provide the applicant with an extension of time of four months from the completion of the cross-examination to file and serve its Rule 42(1) evidence or statement.

If an applicant is in default of completing its cross-examination within the deadline fixed by the Registrar in an order that issued on or after October 1, 2007, the four month extension of time to file its Rule 42(1) evidence or statement will be automatically reduced to two months from the previously fixed deadline for completing the cross-examination or from the date on which the applicant informs the Registrar that it will not proceed with the cross-examination, whichever is earlier.

If an applicant is granted the four month extension of time from the completion of the cross-examination to file and serve its Rule 42(1) evidence or statement (which may be reduced to two months) as detailed above, the Registrar will also generally grant the applicant an extension of time up to the nine month benchmark, amounting to a cooling-off period, for filing its Rule 42 evidence as detailed above under V.1.2. However, in cases where an applicant is granted the four month extension of time from the completion of the cross-examination to file and serve its Rule 42(1) evidence or statement (which may be reduced to two months) as detailed above, the Registrar will not also generally grant the applicant a further extension of time up to the respective three month or six month maximum benchmarks for filing its Rule 42(1) evidence as detailed above under V.1.2.

The above described procedure applies mutatis mutandis to orders for cross-examination in respect of Rule 42(1) evidence. However, the above procedure does not apply to orders for cross-examination in respect of Rule 44(1) evidence.

The Registrar will not make rulings during the course of an opposition as to whether certain questions asked in cross-examination should be answered or whether answers given are adequate, etc. Failure to answer proper questions or fulfill undertakings may, however, result in negative inferences being drawn or in the affidavit or statutory declaration being ignored at the decision stage [see, e.g., Joseph E. Seagram & Sons Ltd. et al. v. Seagram Real Estate Ltd. (1984), 3 C.P.R. (3d) 325 at 332 (TMOB)].

It is the responsibility of the party requesting the cross-examination to ensure that the time limits established in the cross-examination order are met. If the cross-examination cannot be arranged by mutual agreement, the Registrar will, on request, set an appointment for the cross-examination generally as follows:

Where the affiant/declarant (the "deponent") resides in Canada: the party requesting the cross-examination order will conduct the cross-examination proceedings at the place of business or place of the principal office of the party whose deponent is being cross-examined. The party requesting the cross-examination will pay all expenses involved in having its trademark agent present at the place of business or the place of the principal office of the party whose deponent is being cross-examined and bear the cost of all expenses necessary with respect to the cross-examination procedure including the hiring of a reporter and the preparation and delivery of a copy of the transcript to the Registrar. The party whose deponent is being cross-examined will bear the cost of all expenses incurred, including the expenses of its trademark agent and to obtain copies of the transcript.

Where the deponent resides outside of Canada and where the parties are unable to come to an agreement concerning cross-examination in the deponent's country: the deponent will be made available for cross-examination in Canada and the party whose deponent is being cross-examined will bear the cost of all expenses. Once the deponent is made available in Canada, the cross-examination and the costs associated therewith will be handled in the same manner as described above with respect to the cross-examination of a deponent residing in Canada.

Personal attendance is always the preferred method of cross-examination. The Registrar may however, on an exceptional basis, consider requests for an order that a cross-examination be conducted other than by personal attendance (e.g. video conferencing or other electronic means). Requests of this nature are not limited to cases where the deponent resides outside of Canada. Each request will be considered on the specific facts presented and whether it is in the interests of justice to issue an order of this nature. All arrangements and costs associated with the set up and operation of the video conference or other electronic equipment necessary to conduct the cross-examination will be the responsibility of the party requesting such means of cross-examination. All other costs associated with the cross-examination shall be handled in the same manner as described above with respect to the cross-examination of a deponent residing in Canada.

Failure by the deponent to attend a cross-examination shall result in the affidavit or statutory declaration being deemed not to be part of the evidence pursuant to Rule 44(5) of the Regulations. If the deponent delays in fulfilling undertakings, the Registrar will, on request, set a deadline for the fulfillment of undertakings.


IX.1 — Extension of Time to Conduct Cross-Examination

The Registrar may consider one request for an extension of time seeking to extend an order of the Registrar for the applicant or opponent to conduct its cross-examination, as the case may be, up to a maximum benchmark of four months with sufficient reason(s) and the other party's consent. No requests for any further extensions of time will generally be considered. A request seeking to extend the order of the Registrar for the applicant or opponent to conduct its cross-examination is not a request for an extension of time under s. 47(1) of the Act and accordingly does not require payment of the prescribed fee.

Provided that the party conducting a cross-examination has been diligent in complying with the order for cross-examination, the Registrar may consider one or more of the following to be an exceptional circumstance justifying the grant of a further extension of time to comply with a cross-examination order:

  • waiting for the transcript of a recent cross-examination;
  • waiting for answers to undertakings given during a recent cross-examination (however, if the deponent delays in fulfilling undertakings, the Registrar will, on request, set a deadline for the fulfillment of undertakings);
  • the need to schedule multiple cross-examinations; or
  • the terms of the cross-examination order apply to a recently substituted affidavit or statutory declaration.

The Registrar will not set the time, place, and date for conducting cross-examinations in cases where a party is denied a request for an extension of time beyond the maximum benchmark of four months, unless the request from the party specifically states that the parties have been unable to agree upon the time, place and date of the cross-examinations.


X — Hearings


X.1 — Request to be Heard – Rule 46 of the Regulations

If a party would like to be heard and participate in a hearing, that party must give the Registrar written notice of its request to be heard within one month after the date of the Registrar's notice issued under Rule 46(3)(b) of the Regulations. Each party's letter requesting to be heard must:

  • specify whether the party will make representations in person or by telephone;
  • specify whether the party will make representations in English or French;
  • specify whether simultaneous translation will be required if the other party to the opposition makes representations in the other official language; and
  • provide reasons if the parties consider they will require more than two and one half hours for the hearing.

X.2 Scheduling of Hearings

Once the file is ready to be scheduled for a hearing, the Registrar will issue a notice to the parties setting out the time, date, location, duration of the hearing, the official language(s) in which representations will be made and whether simultaneous translation will be provided in accordance with the information provided by the parties in their request to be heard as detailed above under X.1. If the parties have not furnished the specific information required by the Registrar as detailed above under X.1, the Registrar will schedule the hearing to be heard by both parties in person, with representations to be made by the opponent in the official language in which the statement of opposition was written and representations to be made by the applicant in the official language in which the trademark application was written, with no arrangements for simultaneous translation. Generally, two and one half hours will be set aside for the hearing, unless the Registrar determines otherwise.

The Registrar will generally issue notices advising parties of scheduled hearing dates on a quarterly basis with no less than 90 days notice of the hearing date. The parties will have one month from the date of the Registrar's notice within which to confirm their attendance at the scheduled hearing. In cases where the party or parties who had requested to be heard under Rule 46 of the Regulations are not available on the specific scheduled hearing date and the parties consent to having the hearing rescheduled, the Registrar will make reasonable arrangements to reschedule the hearing date, as soon as administratively possible. However, cases will generally only be rescheduled once.


X.3 — Hearings on Short Notice

If the parties consent, they may file a request in writing to have their case scheduled and heard on short notice. Parties may advise the Registrar of the request to be heard on short notice any time after confirming that they wish to be heard at a hearing as detailed above under X.1 Request to be Heard – Rule 46 of the Regulations. The request to have the opposition heard on short notice must:

  1. contain the full contact information for the applicant and the opponent, including a telephone number where the parties can be reached on short notice;
  2. include a statement that the hearing will not exceed two and one half hours; and
  3. include a statement that both parties consent to be heard on short notice.

In addition, the parties must have provided the Registrar with all of the information required under X.1 Request to be Heard – Rule 46 of the Regulations as detailed above. If hearings are cancelled and there is availability, the Registrar will contact the parties by telephone, to schedule a hearing date on short notice in order from the date on which the parties confirmed with the Registrar that they consented to be heard on short notice. Parties will generally only be given two business days to provide written confirmation by facsimile of their attendance at the hearing, before the Registrar will proceed to contact other parties in other opposition proceedings on the list.


X.4 — Changes to the Scheduled Hearing Date

If a party who has requested to be heard in accordance with Rule 46 of the Regulations wishes to make any changes with respect to his/her appearance at a scheduled hearing, including a request for simultaneous translation, a decision not to appear, to make representations by telephone instead of appearing in person, or to appear in person rather than make representations by telephone, then the party is required, as soon as possible and no less than three weeks prior to the scheduled hearing date, to:

  • telephone the Registrar and advise the Registrar of the changes with respect to his/her appearance (please contact the Registrar at 819-997-7300 or 1-866-997-1936 and ask to be transferred to the Trademarks Opposition Board (TMOB) and request to speak to the clerk responsible for the scheduling of oral hearings; and
  • send written confirmation of the changes with respect to his/her appearance by facsimile. No changes with respect to a hearing will be made until such time as written confirmation is received.

X.5 — Simultaneous Translation

The Registrar will arrange for French and English interpreters (simultaneous translation) needed at the hearing. Parties are entitled to use either English or French at the hearing but must indicate their preference in the request to be heard, as detailed above in X.1 –Request to be Heard – Rule 46 of the Regulations. The Registrar will provide simultaneous interpretation (simultaneous translation) in both the English and French language, provided that the Registrar has at least three weeks notice in advance of the scheduled hearing date.


X.6 — Postponement of Hearing

The Registrar will generally not grant any postponements of scheduled hearing dates. In particular, the Registrar will not grant a postponement of a hearing on the basis of consent between the parties and/or on the basis of settlement negotiations. If the parties agree that they no longer wish to be heard, after the opposition has already been scheduled to be heard, the Registrar will proceed, in due course, to issue the final decision under s. 38 of the Act. In general, the Registrar will not hold decisions in abeyance or agree not to issue a decision based on consent of the parties and/or pending settlement negotiations.


X.7 — Cancellation of Hearing

If a hearing has been scheduled and the party or parties who requested the hearing determine that the hearing is no longer required, the party or parties must advise the Registrar as soon as possible by telephone and send written confirmation of the request for cancellation. If both parties requested a hearing (X.1 Request to be Heard – Rule 46 of the Regulations), it will only be cancelled if both parties consent to the cancellation. A hearing will not be cancelled until such time as the Registrar receives the party or parties' written confirmation of the request for cancellation. Parties may reach the Registrar by telephone by calling:

  • the Canadian Intellectual Property Office, Information Branch at 1-866-997-1936 and asking that your call be transferred to the TMOB and then request to speak to the clerk responsible for the scheduling of hearings; or
  • TMOB directly at 819-997-7300 and requesting to speak to the clerk responsible for the scheduling of hearings.

If a hearing is cancelled, the Registrar will proceed to issue a decision in due course, except in cases where the application has been abandoned or the opposition has been withdrawn.


X.8 — Jurisprudence

Parties are required to provide one another and the Registrar by facsimile at least five working days prior to the hearing date with:

  1. their list of case law; and
  2. copies of any unreported decisions to be relied upon at the hearing.

Parties are not required to file books of authorities and they do not need to be filed five working days in advance. If a party wishes the Hearing Officer to have copies of any case law to refer to at the hearing, the party may bring copies to the hearing.


XI Appeals

The decision of the Registrar under s. 38(8) of the Act may be appealed to the Federal Court of Canada (s. 56 of the Act). Any appeal must be filed in accordance with the Federal Courts Act and the Federal Courts Rules. See the practice notice Service of Documents on the Registrar of Trademarks for further information.