Appeals of the Registrar’s Decisions: Service and Filing of Court Documents, Stays and Judgments

This practice notice is intended to provide guidance on how to serve court documents on and file court documents with the Registrar of Trademarks (the "Registrar").

Respondent in an Appeal or a Judicial Review

When appealing a decision of the Registrar under section 56 of the Trademarks Act (the "Act") or seeking a judicial review of a decision of the Registrar, Rules 300 and 303 of the Federal Courts Rules provide that an applicant shall name as a respondent every person directly affected by the order sought in the application, other than a tribunal in respect of which the application is sought.

The Registrar is a tribunal within the meaning of the Federal Courts Act and the Federal Courts Rules. As such, the Registrar is not to be named as a respondent in an appeal or a judicial review of his or her own decision.

Where there are no persons that can be named, the applicant shall name the Attorney General of Canada as a respondent [Rule 303(2) of the Federal Courts Rules].

By way of examples:

• in the case of an appeal of a refusal of an application for the registration of a trademark under section 37 of the Act, the applicant shall name the Attorney General of Canada as a respondent [Warnaco Inc. v. Canada (Attorney General), 2000 CanLII 15214];
• in the case of an appeal of a decision issued in an opposition proceeding under subsection 38(12) of the Act or in a summary expungement proceeding under section 45 of the Act, the applicant shall name the other party to the proceeding before the Trademarks Opposition Board (TMOB) as a respondent.

Service of the Notice of Appeal or the Notice of Application for Judicial Review

When appealing a decision of the Registrar under section 56 of the Act or seeking judicial review of a decision of the Registrar, even though the Registrar is not to be named as a respondent, Rules 127 and 304 of the Federal Courts Rules require that the notice of appeal or the notice of application be personally served on the Registrar and the Attorney General of Canada.

Personal Service on the Registrar and the Attorney General of Canada

The process of personal service is set out in Rules 128 to 137 of the Federal Courts Rules. It is important to note that leaving the notice of appeal or the notice of application at the Canadian Intellectual Property Office (CIPO) mailroom or sending them by courier, mail, or facsimile to CIPO, or by submitting it using CIPO's E-Services online, does not constitute personal service on the Registrar. Even so, personal service of an originating document on the Registrar may be effected by personal service on the Attorney General of Canada as described below.

In accordance with Rule 133 of the Federal Courts Rules, personal service of an originating document on the Attorney General of Canada such as the notice of appeal of a decision of the Registrar under section 56 of the Act or the notice of application seeking judicial review of a decision of the Registrar is effected by filing the original document and two paper copies of it with the Federal Court Registry.

Service of Other Documents

Service on the Registrar of documents other than the notice of appeal or the notice of application, which are not required to be served personally, may be effected by sending the document to the CIPO, attention Deputy Director, Policy and Legislation or attention Chairperson of the Trademarks Opposition Board, at the address provided below. Service of these documents on the Registrar may also be effected by other forms of service [see Rules 138 to 143 of the Federal Courts Rules on other forms of service].

Separate Requirement to File the Notice of Appeal with the Registrar under the Act

Subsection 56(2) of the Act provides that the notice of appeal filed in the Federal Court must also be filed with the Registrar in accordance with the written communications rules set out in the Trademarks Regulations and CIPO's practice with respect to Correspondence Procedures.

By way of examples, a notice of appeal may be filed with the Registrar:

• in the case of an appeal of a refusal of an application for the registration of a trademark under section 37 of the Act,
  • by regular mail at the following address (paper copy only)

    Canadian Intellectual Property Office
    Attn: Registrar of Trademarks, Policy and Legislation Division
    Place du Portage I
    50 Victoria Street
    Gatineau, QC K1A 0C9

• in the case of an appeal of a decision issued in an opposition proceeding under subsection 38(12) of the Act or in a summary expungement proceeding under section 45 of the Act,
  • through the "General Correspondence" tab of the TMOB's E-services; or
  • by regular mail at the following address (paper copy only)

    Canadian Intellectual Property Office
    Attn: Trademarks Opposition Board
    Place du Portage I
    50 Victoria Street
    Gatineau, QC K1A 0C9

It is important to note that the requirements under subsections 56(1), (2) and (3) of the Act are mandatory in nature and a failure to comply with this provision may render the appeal a nullity [Crush International Limited v. Canada Dry Ltd., 47 C.P.R. (2d) 124].

Federal Court Judgments and Stays of Proceedings

In accordance with section 61 of the Act, a certified copy of every judgment or order of the Federal Court, Federal Court of Appeal, and the Supreme Court of Canada relating to a trademark is filed with the Registrar by an officer of the Registry of the Federal Court.

Even so, a person who makes a request to the Registrar relating to a judgment or an order made by the Federal Court, the Federal Court of Appeal or the Supreme Court of Canada in a proceeding to which they were a party should send a copy of that judgment or order to the Registrar along with their request [subsection 61(2) of the Act].

Section 50 of the Federal Courts Act provides for stays of proceedings being conducted before the Federal Courts and provides that the Federal Court may stay the actions of the Registrar pending an appeal from the Federal Court to the Federal Court of Appeal [Ault Foods Ltd v Canada (1992), 44 CPR (3d) 507 (F.C.T.D.)].

Despite any subsequent appeals from the Federal Court to the Federal Court of Appeal of decisions of the Registrar (with the exception of subsequent appeals in opposition and section 45 proceedings as discussed below), the Registrar must, absent a stay of proceedings, act in accordance with all judgments and orders of the Federal Court.

Actions by the Registrar After a Judgment

Pursuant to section 40 and subsection 45(5) of the Act, in appeals concerning a decision of the Registrar under subsections 38(12) or 45(4) respectively, the Registrar shall act in accordance with "the final judgment given in the appeal."

The Registrar considers the judgment of the Federal Court to be the final judgment unless that Federal Court judgment is subsequently appealed to the Federal Court of Appeal. In such a case, the Registrar considers that he cannot act under section 40 or subsection 45(5) of the Act until such time as the Federal Court of Appeal renders its judgment, which judgment is considered to be the final judgment given in the appeal (unless the matter is then heard by the Supreme Court of Canada, in which case, the final judgment is that of the Supreme Court of Canada).

The accuracy of the Register of Trademarks and the status of the trademarks at issue in litigation depends upon the parties keeping the Registrar apprised of the conduct of litigation, including notifying the Registrar of the commencement and disposition of any and all subsequent appeals. Copies of litigation documents can be sent to the attention of:

Canadian Intellectual Property Office
Attn: Registrar of Trademarks, Policy and Legislation Division or Attn: Trademarks Opposition Board
Place du Portage I
50 Victoria Street
Gatineau, QC K1A 0C9