Archived — Proposed Amendments to the Trade-marks Regulations 2014 — Page 4 of 5

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Part 3 - Proposed Amendments to Opposition and Section 45 Summary cancellation Proceedings

General Opposition and Section 45

Opposition and section 45 summary cancellation proceedings are an important part of the Registrar's mandate. Canada's trademark regime must ensure that registered owners' intellectual property is protected but not at the expense of their competitors, of consumers or of the overall good functioning of the marketplace. Both opposition and section 45 summary cancellation proceedings are mechanisms that help maintain that balance in the marketplace by providing reasonably swift and cost-effective administrative decisions.

In order to fulfill their mandate effectively and in a timely fashion, the proceedings should offer straightforward rules and processes that are easily accessible and understood not only by trademark professionals, but also the public. In addition to providing a dispute resolution mechanism for competitors, these proceedings also serve the overriding public interest objective of ensuring that only trademarks which comply with the Trade-marks Act are registered, and are registered in the name of the rightful owner.

Following is a summary of the proposed changes to the Trade-marks Regulations relating to opposition proceedings as well as new regulatory provisions pertaining to section 45 summary cancellation proceedings (s. 45 proceedings). Some of the amendments are proposed to align opposition and s. 45 proceedings with the changes brought about by the treaties while others are meant to improve market certainty by enabling faster resolution of disputes brought before the Trade-mark Opposition Board.

Correspondence – Opposition and Summary Cancellation Proceedings

The current Regulations relating to opposition proceedings only require parties to forward copies of correspondence after the statement of opposition has been forwarded to the applicant. The proposed amendments will require parties to forward copies of all correspondence in both opposition and summary cancellation proceedings.

  1. Amend section 36 of the Trade-marks Regulations to provide that a party corresponding with the Registrar in respect of a trademark application that is the subject of an opposition proceeding (including if an extension of time has been filed to oppose the application) shall forward to the other party a copy of that correspondence.
  2. A party corresponding with the Registrar in respect of a summary cancellation proceeding after a notice has been issued shall forward to the other party a copy of that correspondence.

Service – Opposition and Summary Cancellation Proceedings

Bill C-31 amends section 38 of the Act, including reference to service requirements and timelines for filing and service of evidence as being "prescribed". As a result, amendments to the Regulations dealing with these issues must be made.

The purpose of proposed changes 3 through 9 is to clarify requirements for service and to better facilitate the use of electronic communications. The current regulations and practice notice prohibit both the filing of electronic evidence and the routine service of documents by electronic means. Given the near ubiquitous use of electronic transmission of documents and the acceptability of filing documents with other tribunals and courts in this manner, such delivery should also be acceptable in opposition proceedings.

It is proposed that the regulations be amended to allow parties to serve shorter documents by facsimile without consent and by any other means of electronic transmission, including email, with consent of the other party. 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. The revised regulations will also provide guidance regarding effective dates for service.

The proposed amendments include:

  1. Amend subsections 37(1) – (2) to provide for service in relation to opposition and summary cancellation proceedings as follows:

    Service in respect of any opposition or summary cancellation proceeding before the Registrar may be effected:

    1. in person;
    2. by courier;
    3. by facsimile up to a maximum of 20 pages; or
    4. in any other manner with the consent of the party being served or their trademark agent.

    Unless the parties have agreed otherwise, service on a party that has appointed a trademark agent shall be effected on that agent.

  2. Create a new provision regarding proof of service:

    If the Registrar has reasonable grounds to believe that any material in respect of an opposition or summary cancellation proceeding has not been served within the prescribed time, the Registrar shall request that proof of service be submitted to the Registrar within a time specified by the Registrar. If proof of service is not submitted within the specified time, the material shall be considered not to have been validly served and the Registrar shall not have regard to it unless the Registrar deems the material to be validly served pursuant to paragraph 5 below.

  3. Create a new provision which sets out effective dates for the various methods of service, as follows:
    1. "in person" – service is effected when delivered to the party, or left at the party's address of record
    2. "by courier" – service is effected on the date indicated on the receipt received from the courier service
    3. "by facsimile" – service is effected on the date appearing on the transmission record as indicating successful transmission
  4. Create a new provision which provides that the Registrar may consider a document to have been validly served, and deem it to have been served within the time for doing so, if the Registrar is satisfied that the document came to the notice of or was received by the person to be served within a reasonable time after the deadline for doing so.
  5. Replace section 38 of the Trade-marks Regulations with a provision that provides that if filed in paper form, a statement of opposition shall be filed with the Registrar in duplicate.
  6. Subsection 3(9) of the Trade-marks Regulations is repealed.
  7. If a person files a copy (including an electronic copy) of an affidavit or statutory declaration with the Registrar, the person shall retain the original version for at least one year after the expiry of the appeal period set out in section 56 of the Act and file it with the Registrar upon request.

Case Management – Opposition and Summary Cancellation Proceedings

The following proposed amendment is aimed at introducing regulatory requirements concerning the Registrar's case management in appropriate cases. While the vast majority of cases will follow the pre-established rules and timeframes, there is a need to case-manage a minority of cases at the Board.

In order to reduce costs and delays, it is proposed that the Regulations introduce certain flexibilities to allow the Board to determine timetables and require the parties to cooperate in seeing matters to conclusion in a more timely and cost-effective manner.

These amendments propose to allow the Registrar to apply case management techniques to establish time frames for such items as the delivery and exchange of evidence, canvass issues, narrow issues, and generally, ensure that the parties proceed at a pace determined by the Board, in appropriate cases and as required. All of these proposed measures will benefit parties who will face less market and legal uncertainty thanks to a speedier process and decisions issued in a timely fashion.

These proposed amendments include:

  1. Provide that the Registrar may, for the purpose of securing the just, speedy and most cost-effective determination of a proceeding, review proceedings and the steps that have been or must still be taken and to give directions to the parties that are consistent with the Act and these Regulations, including:
    1. Fixing the time by which a step in the proceeding shall be taken;
    2. Specifying the steps that shall be taken to prepare the case for a hearing; and
    3. Directing how the hearing of the case will be conducted.
  2. The Registrar must inform the parties of the proposed directions in writing and seek their comments before issuing such a ruling. In making such a ruling, the Registrar must consider all the surrounding circumstances of the case and must balance the procedural interest of the parties and the public interest.

Opposition Proceedings

Evidence – Opposition Proceedings

The proposed amendments  involves changing the way that deadlines for filing and service of evidence are calculated. Specifically, deadlines will be calculated from the expiration of a period of time after the filing of the preceding document. Currently, the parties' evidence deadlines are calculated from the date upon which one party serves its evidence on the other party which can sometimes make it difficult to determine a deadline with any certainty. In addition, this process lacks certainty, clarity and transparency.

The proposed amendments are consistent with the Registrar's objective to have clear fixed deadlines for filing and serving evidence. These changes will ensure that the rules governing the proceedings are as clear and transparent as possible.

Proposed amendments

Opponent's Evidence
  1. The portion of subsection 41(1) of the Trade-marks Regulations before paragraph (a) is replaced by the following:

    41.(1) Except if the application is abandoned or deemed under subsection 38(11) of the Act to be abandoned, within four months after the expiry of the time for filing the counter statement, the opponent shall,

Applicant's Evidence
  1. The portion of subsection 42(1) of the Trade-marks Regulations before paragraph (a) is replaced by the following:

    42. (1) Except if the opposition is withdrawn or deemed under subsection 38(10) of the Act to have been withdrawn, within four months after the expiry of the time for submitting the opponent's evidence or statement referred to in subparagraph 41(1)(a), the applicant shall

Reply Evidence
  1. The portion of section 43 of the Trade-marks Regulations before paragraph (a) is replaced by the following:

    43. Except if the application is abandoned or deemed under subsection 38(11) of the Act to be abandoned, within one month after the expiry of the time for submitting the applicant's evidence referred to in subparagraph 42(1)(a), the opponent

Leave Provisions

The following amendments are being proposed to clarify the test applied by the Registrar when determining whether or not to grant a party leave to file an amended pleading or additional evidence.

  1. Amend section 40 of the Trade-marks Regulations to provide that leave will 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. the reasons for not amending the statement of opposition or counter statement sooner;
    3. the importance of the amendment; and
    4. the prejudice that will be suffered by the other party if the amendment is accepted.
  2. Amend section 44 of the Trade-marks Regulations to provide:

    44. (1) No further evidence shall be submitted by any party except with leave of the Registrar, on such terms as the Registrar determines to be appropriate.

    44. (2) A request for leave under subsection (1) shall be accompanied by the evidence that the party proposes to submit.

    44. (3) Leave shall be granted under subsection (1) 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. the reasons for not submitting the evidence sooner;
    3. the importance of the evidence; and
    4. the prejudice that will be suffered by the other party if the evidence is admitted.

    44. (4) The Registrar's grant of leave to file an affidavit or statutory declaration under section 44(1) of the Regulations will be made conditional on the affiant or declarant being made available for cross-examination. Unless indicated otherwise, a grant of leave under section 44(1) of the Regulations will have no effect on any outstanding deadlines.

Cross-Examination

The current rules for cross-examination orders are unduly complicated because orders are tied to extensions of time to submit evidence. The result is an overly protracted process at the cross-examination stage with parties taking on average more than one full year to conduct each of their respective cross-examinations. Not only does this create unnecessary delays, but parties who request cross-examination often do not proceed with conducting the requested cross-examination.

Under the revised regulations the rules concerning cross-examination requirements will be simplified. Specifically, there will be a prescribed period for the parties to conduct all cross-examinations. The change would provide parties with the flexibility to conduct cross-examinations as it suits the progress of their case and would also require parties to put their best evidence forward from the outset.

The amendments will also make changes to the provisions regarding which party will be responsible for filing the transcript and responses to undertakings after the cross-examination has been completed. Specifically, rather than requiring the party who has conducted the cross to file all documents, the amendment proposes splitting this responsibility with the party whose affiant has been cross-examined being made responsible for filing the responses to undertakings.

The proposed amendments include:

  1. A party in an opposition proceeding may, at any time up until four months after the expiry of the time for submitting the opponent's reply evidence under section 43, cross-examine under oath or solemn affirmation the affiant or declarant of any affidavit or statutory declaration.
  2. Cross-examinations shall be held on a date, at a time and place and in a manner before a person agreed to by the parties or their agents.
  3. In the absence of an agreement, any of the parties may request that those matters be designated by the Registrar. The Registrar shall grant the request if the party seeking to conduct the cross-examination establishes that they have been unable to reach an agreement with the other party despite having made reasonable and timely efforts to do so, and that there has been no undue delay in making the request.
  4. Before the expiry of the time limit for completing the cross-examination:
    1. the party who conducted the cross-examination shall file with the Registrar and serve on the other party a transcript of the cross-examination and exhibits to the cross-examination; and
    2. the party whose affiant or declarant was cross-examined shall file with the Registrar and serve on the other party any documents or materials undertaken to be submitted by the party.
  5. An affidavit or statutory declaration shall not form part of the evidence on record if the affiant or declarant declines or fails to attend for cross-examination.

Written Representations

Currently, the deadline for the filing of written arguments is set by way of notice issued by the Registrar. The Registrar also has the administrative burden of receiving and then forwarding copies of the written arguments to the parties. This process is inefficient, causes unnecessary delays, and is inconsistent with the practices of other tribunals and the Federal Court of Canada. The Registrar proposes to set prescribed deadlines for parties to file and serve their written arguments sequentially.

Section 46 of the Regulations is proposed to be replaced by the following with respect to written representations and hearings in opposition proceedings:

  1. Within two months after the expiry of the time for the completion of all cross-examinations on affidavits or statutory declarations referred to in subsection 41(1), the opponent may file written representations with the Registrar and shall serve a copy on the applicant.
  2. Within two months after the expiry of the time for the opponent to file written representations, the applicant may file written representations with the Registrar and shall serve a copy on the opponent.
  3. No written representations shall be filed after the expiry of the periods referred to in sections (1) and (2), except with leave of the Registrar.

Oral Hearings

The proposed amendments aim to establish a clear, prescribed date for parties to request a hearing. The current process involves the Registrar giving notice to the parties that they may request an oral hearing. The proposed changes also propose to clarify what information is required from the parties, if an oral hearing is requested, and how parties can go about making changes once the Registrar has issued a hearing notice.

These amendments include the following:

  1. Within one month after the expiry of the time for the applicant to file written representations, any party wishing to make representations to the Registrar at a hearing shall file with the Registrar and serve on the other party a request for hearing that:
    1. Specifies whether the party intends to make representations in English or French
    2. Specifies whether the party will require simultaneous translation if the other party makes representations in the other official language; and
    3. Indicates whether the party wishes to make representations in person, by phone or by other means of communication offered by the Registrar and sets out any information necessary to effect the chosen means of communication.
  2. Following receipt of a request from at least one party who wishes to make representations to the Registrar at a hearing, the Registrar shall send the parties a written notice setting out the time, date and place of, and other details concerning, the hearing.
  3. If only one of the parties files a request to make representations, and if, after a notice is sent pursuant to paragraph 26 above, that party withdraws its request, the Registrar shall notify both parties that the hearing is cancelled.
  4. A party may notify the Registrar of changes to any of the information provided under paragraph 25 above and the Registrar shall modify the administrative arrangements for the hearing accordingly if the request is received by the Registrar at least one month before the date of the hearing or, if the Registrar is reasonably able to modify the administrative arrangements that have been made for the hearing, at any time before the hearing.
  5. Repeal section 47 of the Trade-marks Regulations as extensions of time in opposition proceedings may be obtained pursuant to section 47(1) and 47(2) of the Act.

Geographical Indications

  1. Make any consequential amendments necessary to bring the procedure for geographical indication objection proceedings in line with the procedure for oppositions as set out in the new Regulations.

Section 45 Summary cancellation Proceedings

Bill C-31 provides for new regulation making authority to strengthen section 45 proceedings, including the prescribing of deadlines for the filing of the parties' written representations and requesting to be heard at a hearing.

Written Representations

Bill C-31 amends section 45(1) and (2) and sets out service requirements and timelines for filing and serving of written representations as being "prescribed" and thus Regulations to this effect must be drafted.

The amendments propose to provide new prescribed time for parties in summary cancellation proceedings to file and serve their written arguments sequentially. This amendment is generally in keeping with the current practice in summary cancellation proceedings. However, the timelines have been aligned with opposition proceedings and parties are not only required to file but also serve their written arguments.

These amendments include:

  1. Provide that in a summary cancellation proceeding where the registered owner has filed evidence that, within two months from the filing of the registered owner's evidence, the requesting party may file written representations with the Registrar and shall serve a copy on the registered owner.
  2. Within 2 months after the expiry of the time for the requesting party to file written representations, the registered owner may file written representations with the Registrar and shall serve a copy on the requesting party.
  3. No written argument shall be filed after the expiry of the time for the registered owner to file written representations, except with leave of the Registrar.

Hearings – Summary Cancellation Cases

The proposed amendments aim to established clear, prescribed date for parties to request a hearing in summary cancellation proceedings and align with the proposed amendment for requests for hearings in opposition cases detailed above.

These amendments include the following:

  1. Within one month after the expiry of the time for the registered owner to file written representations, any party wishing to make representations to the Registrar at a hearing shall file with the Registrar and serve on the other party a request for hearing that:
    1. Specifies whether the party intends to make representations in English or French
    2. Specifies whether the party will require simultaneous translation if the other party makes representations in the other official language; and
    3. Indicates whether the party wishes to make representations in person, by phone or by other means of communication offered by the Registrar and sets out any information necessary to effect the chosen means of communication.
  2. Following receipt of a request from at least one party who wishes to make representations to the Registrar at a hearing, the Registrar shall send the parties a written notice setting out the time, date and place of, and other details concerning, the hearing.
  3. If only one of the parties files a request to make representations, and if, after a notice is sent under paragraph 35 above, that party withdraws its request, the Registrar shall notify all the parties that the hearing is cancelled.
  4. A party may notify the Registrar of changes to any of the information provided under paragraph 34 above and the Registrar shall modify the administrative arrangements for the hearing accordingly if the request is received by the Registrar at least one month before the date of the hearing or, if the Registrar is reasonably able to modify the administrative arrangements that have been made for the hearing, at any time before the hearing.
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