Draft – Case management in proceedings under sections 11.13, 38 and 45 of the Trademarks Act

While the Registrar has a long-standing practice of conducting case management pursuant to the common law principle that the Registrar, when acting in a quasi-judicial function, is a master of its procedure [Prassad v Canada (Minister of Employment and Immigration), 1989 CanLII 131 (SCC), [1989] 1 S.C.R. 560, at pages 568-569], this practice notice sets out the Registrar's case management practices in view of sections XX-XX of the Regulations.

Relevant legislation and practice notices

This Practice Notice makes reference to the following legislation and practice notices:

• Trademarks Act (the Act)
• Trademarks Regulations (the Regulations)
• Practice in Objection Proceedings under Section 11.13 of the Trademarks Act
• Practice in trademark opposition proceedings
• Opposition to Protocol applications and section 45 cancellation proceedings against Protocol registrations
• Practice in section 45 proceedings
• Divisional applications in opposition
• Draft – Practice notice on confidentiality orders
• Fee waivers and refunds

On this page

• I Introduction
• II Purpose of Case Management
• III Circumstances Where Case Management May Be Employed
• IV Parties Will be Advised
• V Case Management is Procedural not Substantive
• VI Case Management and Section 47 of the Act
• VII Case Management and Interlocutory Rulings and Leave Requests
• VIII Circumstances Where a Proceeding May Become a Case-Managed Proceeding
• IX Examples of Directions in Case-Managed Proceedings

I. Introduction

The Registrar uses case management to achieve procedural efficiency and cost-savings while moving its cases towards a timely resolution.

II. Purpose of Case Management

The purpose of case management is to allow the Registrar to give a direction or make an order to deal with matters in an efficient and cost-saving manner as the circumstances and considerations of fairness permit (section XX of the Regulations).

Where required in exceptional cases, the Registrar may order that a proceeding continue as a case-managed proceeding (section XX of the Regulations). For a case-managed proceeding, the Registrar has considerable flexibility to tailor a proceeding. This includes the authority to vary the application of the Regulations or adjust deadlines set out in the Act.

III. Circumstances Where Case Management May Be Employed

Case management has and will be employed in situations, including the following, to deal with procedural matters in an efficient and cost-saving manner:

• Extending deadlines to align multiple related proceedings.
• Hearing related files together or consecutively.
• Convening a conference call with the parties to address issues that could potentially delay a proceeding (e.g. addressing requests for accommodation at a hearing).
• Convening a conference call with the parties to address the scheduling and conduct of hearings, including hearings implicating multiple related proceedings, hearings with exceptionally voluminous or complicated records, hearings where confidential information will be discussed, or hearings where there are outstanding issues to resolve with respect to attendance.

Other types of case management may be applied depending on the circumstances of a proceeding.

IV. Parties Will be Advised

When the Registrar determines that case management will be employed, for example aligning the deadlines in multiple related proceedings, setting down related files to be heard at the same time or setting up a conference call, the parties will be advised in writing.

V. Case Management is Procedural not Substantive

Sections XX-XX of the Regulations are concerned with the case management of procedural as opposed to substantive aspects of proceedings. Therefore, the Registrar will not use case management to make substantive rulings such as finding that a party has failed to meet their evidential burden on a ground of opposition prior to a decision.

VI. Case Management and Section 47 of the Act

In granting extensions of time pursuant to section 47 of the Act, the Registrar must be "satisfied that the circumstances justify an extension" or the failure to apply for an extension prior to the deadline was "not reasonably avoidable".

The Registrar will generally not use its case management powers to grant extensions of time where an extension request has already been assessed and refused under sections 47(1) or 47(2) of the Act. To do so would introduce uncertainty, inefficiency and delay into a proceeding which runs contrary to the purpose of case management.

VII. Case Management and Interlocutory Rulings and Leave Requests

A party wishing to strike all or part of a statement of opposition, amend a statement of opposition or counter statement or submit additional evidence, should do so pursuant to the relevant sections of the Act and Regulations.

The Registrar will generally not use its case management powers in the course of an opposition proceeding to strike all or part of a statement of opposition, grant amendments to statements of opposition or counter statements or submit additional evidence. To do so would introduce uncertainty, inefficiency and delay into a proceeding which runs contrary to the purpose of case management.

VIII. Circumstances Where a Proceeding May Become a Case-Managed Proceeding

In exceptional cases, the Registrar may order a proceeding to continue as a case-managed proceeding (section XX of the Regulations). In doing so, the Registrar shall have regard to all of the surrounding circumstances, including:

1. whether the Registrar's intervention in the proceeding is required in order to deal with matters in an efficient and cost-saving manner;
2. procedural efficiency;
3. volume of evidence;
4. complexity of the proceeding;
5. whether the parties are represented;
6. number of related files involving the same or similar parties;
7. the amount of intervention by the Registrar that the proceeding is likely to require;
8. whether substantial delay has occurred or is anticipated in the conduct of the proceeding.

(section XX of the Regulations)

Two situations have been currently identified by the Registrar where the surrounding circumstances may warrant a proceeding being designated as a case-managed proceeding on terms that the Registrar considers appropriate:

Divisional Applications in Oppositions

Where an application has been divided into multiple applications which have been or will be opposed by the same opponent on the basis of similar grounds, it may be most efficient to consolidate the submission of documents, rulings or hearings, as appropriate.

Corrections to Protocol Applications

If a substantive amendment is received from the International Bureau to a Protocol application, after an opposition is commenced, and the application is re-advertised pursuant to sections 116-117 of the Regulations, it may be most efficient to deem certain documents in the opposition to have been submitted in respect of the amended Protocol application.

Where possible, the same Member of the Trademarks Opposition Board will have carriage over a case-managed proceeding including making any directions or orders, issuing any interlocutory rulings, presiding over the hearing and/or issuing the decision.

IX. Examples of Directions in Case-Managed Proceedings

The Registrar may, in relation to a case-managed proceeding, give a direction or make an order that varies, supplements or dispenses with the application of the Regulations or fixes, despite any time or manner that is provided for under the Act, the time by which or the manner in which a step in the proceeding is to be completed (section XX of the Regulations). In doing so, however, the Registrar cannot give a direction or make an order that is inconsistent with sections 35, 49, 56(1), 83, 91(1), 125, 126, 128 of the Regulations (section XX of the Regulations).

In respect of proceedings involving divisional applications, for example, the Registrar may order that the submission of documents be consolidated such that at a party's election, the documents submitted in respect of the original application may be deemed submitted in respect of each of the divisional applications. This would, for example, permit an opponent to submit a statement of opposition against the original application and that at their election, the statement of opposition may be deemed submitted against each divisional application. This would also permit a party to submit an extension request in the original application and, at the party's election, the extension request may be deemed submitted against each divisional application. Consolidation will not apply to the submission of fees to the Registrar. Pursuant to the practice notice Fee waivers and refunds, all the prescribed fees in respect of each application will still be required.

In respect to proceedings involving a corrected Protocol application which has been re-advertised after correction, the Registrar may notify the parties that any documents already submitted/served in the course of the opposition to have been filed/served in the proceeding against the corrected Protocol application, and inform the parties that it is not necessary to re-file and re-serve those documents. Pursuant to the practice notice Fee waivers and refunds, all the prescribed fees in respect of the corrected application will still be required.

Once it is no longer necessary for a case to be a case-managed proceeding to facilitate efficiency, the Registrar will advise the parties and the proceeding will continue in accordance with the provisions set out in the Act and the Regulations.