You will find on this page three webinars that were offered by the Trademarks Opposition Board (TMOB).
The first two webinars provide information specific to proceedings involving Madrid Protocol applications or registrations. The third webinar provides information on the TMOB’s electronic services.
If you are an intellectual property professional, organization, business or entrepreneur with an interest in this area, you will surely find these webinars to be useful and informative.
In this webinar, the TMOB is sharing with the trademark agent community some best practices and potential pitfalls to avoid when conducting opposition proceedings against Madrid Protocol applications, including limits to extensions of time and the necessity to file the statement of opposition electronically. The TMOB is also answering other questions gathered during consultations with stakeholders.
Questions from participants
Below, each of the questions posed during the webinar are answered. For information on the treatment of Protocol applications and registrations in opposition and section 45 cancellation proceedings, we recommend consulting the following:
Q1: What is the difference between the statement of opposition and a provisional refusal based on opposition? Who receives each document?
A1: A statement of opposition is filed by an opponent using CIPO’s online services and, if it is in compliance with section 38(3) and 38(4) of the Trademarks Act (the Act), is forwarded to the applicant by the Registrar.
The statement of opposition is used by the Registrar to complete a provisional refusal based on opposition which is sent to the International Bureau (IB) of the World Intellectual Property Office (WIPO). A copy of this communication is sent to both the applicant and the opponent.
Q2: When can a retroactive extension of time be obtained to oppose a Protocol application?
R2: Pursuant to section 125 of the Trademarks Regulations (the Regulations), a retroactive extension of time to oppose a Protocol application can be granted provided it does not extend the opposition deadline by more than four months from the end of the initial two-month advertisement period. Beyond that four months, the Registrar cannot grant an extension of time on request. Retroactive extension requests relating to Protocol applications are otherwise assessed in the normal fashion under section 47(2) of the Act.
Q3: If an extension is exhausted and an appeal is launched within the 7 months after advertisement, will the Board notify the Bureau to ensure the application is not granted pending the appeal?
A3: If the refusal of an extension of time is appealed to the Federal Court, the Registrar will follow any orders issued by the Federal Court including an order to send the provisional refusal based on opposition (if a statement of opposition has been provided by an opponent).
Q4: What is the recourse if the TMOB does not provide a provisional refusal by the deadlines in the Madrid Protocol (i.e. the opponent did everything in its power)?
A4: If the Registrar fails to notify the IB of a provisional refusal within the time limits set out in the Madrid Protocol, the Protocol application will register pursuant to section 132 of the Regulations. Once registered, section 57 of the Act provides that the Federal Court has jurisdiction to order an entry in the register be struck out or amended.
Q5: How do you contact an opponent if irregularities are found in the provisional refusal?
A5: If the IB issues an irregularity that requires information from an opponent to resolve, the Registrar will contact an opponent by mail and email. More information about the procedure for an irregularity issued with respect to a provisional refusal based on opposition may be found here.
Q6: How does CIPO address requests to divide at opposition on Protocol applications?
A6: Information on how to divide a Protocol application can be found in the Madrid Examination and Procedures Manual - International Trademarks under the Madrid System.
A divided Protocol application benefits from steps taken in relation to the original Protocol application. As such, any ongoing opposition on the original application will be deemed to have been filed against the divisional application and steps taken in that opposition will apply to the divisional application. Further information on the treatment of divisional applications in opposition can be found here.
Q7: If we file a statement of opposition within six months of the advertisement of the application and it is missing information, can we request a retroactive extension of time and file a new statement of opposition this time including the missing information and move forward?
A7: If the Registrar has not rejected the statement of opposition pursuant to section 38(4) of the Act and the deadline set out in article 5(2)(c) of the Protocol has not yet passed, retroactive extensions of time to oppose a Protocol application remain available provided it does not extend the opposition deadline by more than four months from the end of the initial two-month advertisement period. Retroactive extension requests relating to Protocol applications are otherwise assessed in the normal fashion under section 47(2) of the Act.
Q8: Can an opponent oppose only certain goods/services?
A8: An opponent may indicate in the statement of opposition that it only opposes certain goods and services. However, the entirety of the Protocol application will remain in opposition and the provisional refusal based on opposition sent to the IB will be with respect to all of the goods and services for which protection in Canada has been sought. This can be contrasted with some other jurisdictions where partial refusals pertaining to only some of the goods and services are sent.
Q9: For the ground of opposition based on section 104 of the Regulations, how would goods/services go beyond the international application when an Examiner wouldn't permit an amendment to that effect?
A9: Similar to a ground of opposition based on the statement of goods and services not appearing in ordinary commercial terms, an opponent may allege that the goods or services specified in the Protocol application are not within the scope of the international registration, notwithstanding that this is something that the Registrar assesses prior to approving an application for advertisement.
Q10: When we login to the opposition e-services and enter an application number that is for a Protocol Application, the system will automatically know it is a Protocol Application and the correct form will appear for us to fill in?
A10: If the number for a Protocol application is entered, the correct form will appear to be completed by the opponent.
Q11: Est-ce que l'OPIC transmet l'avis émis sous l'article 45 à l'adresse du propriétaire inscrit si elle est à l'extérieur du Canada If no Canadian Agent is appointed for a Protocol registration, who will receive the correspondence?
A11: If no agent is appointed, a section 45 notice will be sent to the current owner of the registration by registered mail. If a trademark agent is appointed, the section 45 notice will be sent to the trademark agent by registered mail.
Q12: Is it preferable to use TMOB e-service - for serving other side?
A12: The Registrar does not have a preference for which of the service methods is used to serve the other party in an opposition proceeding.
Q13: With respect to a section 16 ground of opposition based on an earlier application: Does the applicant have to state in its Statement of Opposition that it will rely on 12(1)(d) if its application issues to registration? Or will reliance on the opponent’s earlier application automatically give the opponent a right to later amend its Statement of Opposition to rely on 12(1)(d) supported by the registration?
A13: Once the application matures to registration, the opponent should request leave to amend its statement of opposition to include a section 12(1)(d) ground of opposition based on the newly-registered registration. More details are provided in the practice notice.
This second webinar provides a general overview of opposition and section 45 proceedings against Madrid Protocol applications or registrations.
In this third webinar, the TMOB gives an overview of how to navigate through their electronic services and demonstrates the main transactions and functionalities available in the context of opposition and section 45 proceedings. Filing online is the fastest and easiest way to correspond with the Registrar. See below the list of the topics that were covered in this webinar, along with timestamps to facilitate the consultation of the recording:
- Overview of the navigation: 7:37
- First extension of time to oppose: 13:22
- Submitting a statement of opposition (domestic and protocol applications): 17:44
- Requesting a retroactive extension of time: 24:00
- Submitting evidence: 30:40
- Serving evidence on the other party: 35:21
- Submitting written representations: 40:31
- Requesting a hearing: 43:49
- Requesting the issuance of a notice under section 45: 46:34
- Submit general correspondence: 50:21
- Request a cross-examination order accompanied by a request for an extension of time to submit evidence: 51:30
Parties before the TMOB, or their appointed agents, are strongly encouraged to use the TMOB's electronic services to file any documents, in order to ensure for their timely receipt and processing. Our online solutions are available 24/7.
Questions from participants
Q1: Is it possible to enter multiple opponents?
A1: Yes. A statement of opposition may name any number of persons jointly as opponents. You may enter multiple names in the "opponent name" field and separate each by a comma. However, you may only enter one address.
Q2: Can evidence be e-filed in colour?
A2: Yes. The Board's e-Services allow for the filing of evidence in colour.
Q3: If we are currently using the Trademarks Branch e-Services to file applications, does it mean that we'll automatically be able to use the TMOB e-Services without extra registration?
A3: Yes. You will be able to use the same account credentials for both the Trademarks Branch e-Services and the Trademarks Opposition Board e-Services sites.
Q4: If I start with the e-filing services, do I have to use it for all stages of a proceeding, or can I send some documents by mail?
A4: You may use either the Board's e-Services site or mail to send your correspondence to the Board. You are not restricted to use one method or the other. Using the Board's e-Services will allow your correspondence to reach the Board much more quickly than if sent by regular mail. When submitted through the e-Services , your correspondence is received directly by the Board, whereas, when received by regular mail, your correspondence must go through a number of different channels within CIPO before reaching the Board.