Consultation on Proposed Amendments to Canadian Trade-mark Regulations Governing Oppositions

The Canadian Trade-marks Opposition Board (TMOB) is seeking comments on proposed amendments to the Trade-marks Regulations. The deadline for comments is September 20, 2010. The consultation notice outlining the proposed amendments also provides contact information for interested parties to send comments on the proposed amendments.

Some of the proposed changes include the following.

  1. Filing Evidence: Allowing for electronic filing of affidavits and solemn declarations with the Canadian Registrar of Trade-marks.
  2. Service: The TMOB is considering allowing parties to serve all documents that do not exceed 25 pages by fax without consent. The TMOB is also considering allowing parties to serve all documents by any other means of electronic transmission, including e-mail, with consent.
  3. Reply Evidence: The proposed elimination of the Opponent’s current right to file reply evidence. The TMOB is considering eliminating reply evidence, as statistics show that such evidence is very rarely filed.
  4. Cross-examinations: Currently, an applicant of an opposed trade-mark application has the opportunity to request leave to cross-examine an opponent on the opponent’s evidence before the applicant files its evidence. Likewise, the opponent has the opportunity to cross-examine the applicant on its evidence prior to the opponent filing reply evidence. Under the proposed amendments, the cross-examination of both parties would occur after the applicant files its evidence. The parties would have three (3) months to conduct the cross-examination. The proposed amendments, if enacted, would also create new deadlines for filing transcripts and undertakings arising from cross-examinations, as well as assign the responsibility for such filings to specific parties.
  5. Written Arguments: Under the proposed amendments, opponents would have three (3) months after cross-examinations to file and serve their written arguments. Applicants would then have three (3) months after the opponent files its written arguments to file and serve their arguments. The sequential filing of the parties’ arguments, first by the opponent, then by the applicant, mirrors the current sequential written argument process in Canadian summary expungement proceedings.
  6. Transitional Provision: The TMOB is proposing eliminating the transitional provision grandfathering the timelines for oppositions of trade-mark applications advertised before October 1, 2007. The TMOB is considering this amendment, as it perceives that the transitional provision has unduly complicated proceedings by creating a dual system for oppositions – one for applications advertised before October 1, 2007 and another system for applications advertised on or after October 1, 2007. The TMOB also notes in the consultation notice that the dual system has resulted in applicants and opponents making errors in calculating their respective deadlines.

In the consultation notice, the TMOB indicates that it is also considering similar amendments to the Regulations governing the objection procedures for geographic indications, as well as introducing regulations specifically governing summary expungement (a.k.a. section 45) proceedings. The Regulations do not currently contain provisions specifically governing section 45 proceedings.


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