Practice in trademark opposition proceedings

Publication Date:

Amendment Dates: ,

This practice notice governs all trademark applications in opposition including Protocol Applications and Divisional Applications. Exceptions to what is detailed here along with additional guidance on the practices and procedures of the Trademarks Opposition Board (TMOB) governing Protocol Applications and Divisional Applications may be found in Opposition to Protocol Applications and Section 45 Cancellation Proceedings against Protocol Registrations and Divisional Applications in Opposition.

For further information, consult the FAQs on Trademark Opposition Proceedings.

Relevant legislation and practice notices

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

On this page

I Correspondence

Correspondence addressed to the Registrar of Trademarks (the Registrar) in respect of an opposition proceeding must follow sections 3-15, 43 and 44 of the Regulations and the Canadian Intellectual Property Office (CIPO)'s practice with respect to Correspondence Procedures.

Correspondence intended for the Registrar must not relate to more than one application [section 4(1) of the Regulations].

However, in the case of opposition proceedings against related applications (i.e. those that involve the submitting and serving of identical materials in concurrent proceedings with the same parties), parties are permitted to reference more than one application in their correspondence pertaining to the provision of evidence, written representations and hearing requests [section 4(2)(h) of the Regulations].

Correspondence may be sent to the Registrar through the TMOB E-services (for help with using the TMOB's E-Services, please consult the TMOB's Online Help tool), by regular mail, facsimile or by physical delivery by courier or in person directly at CIPO.

It is only necessary to submit a single copy of the correspondence and any accompanying documents to the Registrar, even in the case of opposition proceedings against related applications. Parties are asked not to submit paper copies of correspondence that has already been sent electronically.

Correspondence relating to an opposition proceeding should be clearly marked "Attn: Trademarks Opposition Board" and must include:

  • the name of the opponent;
  • the name of the applicant;
  • the application number; and
  • the trademark;
  • in the case that the correspondence is sent by a trademark agent, the name of that trademark agent; and,
  • if all the trademarks agents at the same firm are appointed in respect of the business to which the correspondence relates, the name of that firm.

Documents, including evidence, submitted to the Registrar are open to the public and cannot be returned to the party that filed them [section 29(1)(f) of the Act].

I.a Plan ahead

Unexpected technological problems or delays in the delivery of mail can occur. It is recommended to send any correspondence the Registrar ahead of time. Filing deadlines should be kept in mind and plenty of time should be planned to resolve of any potential issues.

I.1 Requirement to copy other party

After the Registrar has forwarded a copy of the statement of opposition to the applicant under section 38(5) of the Act, a party corresponding with the Registrar must copy the other party, on the same day, with any correspondence sent to the Registrar relating to the opposition, other than a document they are otherwise required to serve [section 44 of the Regulations].

II Pleadings

II.1 Statement of opposition

Any person (opponent) may file a statement of opposition with the Registrar within two months after the advertisement of a trademark application on CIPO's website [section 38(1) of the Act and section 41 of the Regulations]. The date of advertisement will be clearly indicated on the CIPO website.

A statement of opposition must be based on any of the grounds of opposition set out in section 38(2) of the Act and the grounds must be set out in sufficient detail to enable the applicant to reply thereto [section 38(3)(a) of the Act].

It is the responsibility of the opponent to ensure that each ground of opposition is properly pleaded. The failure to do so may result in a ground of opposition not being considered [Massimo De Berardinis v. Decaria Hair Studio (1984), 2 CPR (3d) 319 (TMOB)].

The Registrar's responsibility is only to determine whether the statement of opposition raises one substantial issue for decision and not to ensure that all grounds are properly pleaded [sections 38(4) and 38(5) of the Act].

II.1.1 Joint opponents

A statement of opposition may name any number of persons jointly as opponents.

Where an extension of time to oppose is granted in the name of one person, a subsequently filed statement of opposition may name that person jointly as opponent along with any number of other persons, whether or not they were named in the initial request for the extension of time to oppose.

Joint opponents must provide a single postal address for correspondence [section 6(1) of the Regulations] and may all be represented by the same agent.

II.1.2 Required fee

The fee for filing a statement of opposition is set out in the Fees for trademarks webpage. A statement of opposition must be accompanied by payment in full of the prescribed fee, as required by section 38(1) of the Act and section 42 of the Regulations. If the statement of opposition is not accompanied by payment in full of the prescribed fee, the Registrar will inform the prospective opponent and will not consider the statement of opposition until such payment is received.

II.2 Interlocutory rulings

The applicant may request an interlocutory ruling to strike all or any portion of the opponent's statement of opposition. Such request must be made prior to the filing and serving of the counter statement [section 38(6) of the Act]. The Registrar will not consider interlocutory ruling requests that are filed at the same time as or after the counter statement.

Once a request for an interlocutory ruling has been filed, the Registrar will give the opponent an opportunity to reply and/or request leave to file an amended statement of opposition under section 48 of the Regulations to address the applicant's objections.

A request for an interlocutory ruling will have no effect on the applicant's deadline for filing and serving its counter statement unless the applicant specifically requests an extension of time under section 47 of the Act prior to or at the same time it requests the interlocutory ruling. In such cases, the Registrar will generally grant the applicant a one-month extension of time from the date of the interlocutory ruling to file and serve its counter statement.

Once the counter statement has been filed and served, issues concerning striking all or any portion of the opponent's pleadings will only be considered at the decision stage.

Requests for an interlocutory ruling to strike all or any portion of the applicant's counter statement will not be considered.

II.3 Counter statement

Within two months after a copy of the statement of opposition has been forwarded to the applicant, the applicant shall file and serve a counter statement [section 38(7) of the Act and section 47 of the Regulations]. The counter statement need only state that the applicant intends to respond to the opposition.

A trademark application will be deemed abandoned under section 38(11) of the Act if the applicant does not file and serve its counter statement within the time prescribed by section 47 of the Regulations.

III Service in opposition proceedings

This section is intended to cover service requirements in general. For more detailed information on service requirements for electronically filed evidence, please consult Electronic evidence in opposition and section 45 proceedings

III.1 Service on representative of the applicant

Unless they have appointed a trademark agent, an applicant may set out the name and address in Canada of a person on whom or a firm on which service of any document in respect of an opposition may be made by:

  • providing such information in their counter statement; or
  • filing with the Registrar and serving on the opponent a separate notice setting out this information [section 45 of the Regulations].

III.2 Service on trademark agent

If a party to be served appoints a trademark agent in respect of an opposition proceeding, service must be effected on that agent unless the parties agree otherwise [section 46(2) of the Regulations].

III.3 Manner of service

Service of documents in respect of an opposition proceeding may be effected in any of the manners listed in section 46 of the Regulations.

In the absence of the parties agreeing to service in any other manner [section 46(1)(e) of the Regulations], and where the party seeking to effect service has the information necessary to do so, service of a document must be effected by:

  • personal service;
  • registered mail; or
  • courier.

[sections 46(1)(a) to (c) of the Regulations]

In the absence of the parties agreeing to service in any other manner, and where the party effecting service does not have the necessary information to serve the other party by personal service, registered mail or courier, service must be effected by:

  • the sending of a notice to the other party advising that the document to be served has been filed with or provided to the Registrar [section 46(1)(d) of the Regulations].

III.3.1 Personal service

If the party being served is represented by a single trademark agent, the Registrar considers that a document can be served by personal service by:

  • leaving a copy of the document with the agent or with an employee of the agent at the agent's office.

If the party being served is represented by all the trademark agents at the same firm, the Registrar considers that a document can be served by personal service by:

  • leaving a copy of the document with any agent who is a member of that firm or with an employee of that firm.

If the party being served is self-represented, the Registrar considers that a document can be served by personal service by:

  • hand delivering a copy of the document to the party being served;
  • if the address of record for the party being served is a place of business, leaving a copy of the document with an employee of the business at the address of record for the party being served; or
  • if the address of record for the party being served is a residence, leaving a copy of the document with an adult at that address and mailing a copy of the document to the postal address of record for the party being served.

III.3.2 Registered mail

Registered mail is a service offered by Canada Post to customers that includes proof of mailing and/or proof of delivery. The service secures the signature of the party being served or the party's representative or appointed agent and provides the serving party with either a print-out of tracking information or a mailing receipt showing the date the document was provided to Canada Post.

The Registrar considers any service by Canada Post that provides the tracking of a document or requires signature on delivery (including, for example, XpressPost) to fall within the definition of service by registered mail [Biogen Idec Ma Inc v Canada (Attorney General), 2016 FC 517].

III.3.3 Courier

Courier is a third-party service other than registered mail which provides confirmation of receipt of a document for delivery, personal delivery and proof of delivery.

III.3.4 Sending a notice

Parties effecting service by the sending of a notice may do so by regular mail, registered mail or courier to the address of record for the party being served on the same date that they filed with or provided to the Registrar the document to be served. This will enable the Registrar to confirm that service was made on the correct party if the Registrar requests proof of service under section 46(9) of the Regulations.

Such notice should identify the proceeding, the parties to the proceeding and each of the documents filed with the Registrar. The date on which the documents were filed with the Registrar should also be indicated.

If contacted by the party being served by sending of a notice, the serving party is encouraged to provide a copy of any documents referred to in the notice to the party being served. Copies of documents may also be obtained by contacting CIPO's Client Service Centre and paying the requisite fee.

III.3.5 Any manner agreed to by the parties

Service can also be effected in any manner that is agreed to by the parties [section 46(1)(e) of the Regulations]. This includes electronic means such as through the TMOB E-services or by email. This manner of service is available regardless of whether the party being served has an address in Canada.

III.4 Effective date of service

The effective date of service of a document depends on the manner of service [section 46(3) of the Regulations].

Effective date of service
Manner of service Effective date of service
Personal service Day the document is delivered
Registered mail Day the document is mailed
Courier Day the document is provided to the courier
Electronic means Day the document is transmittedFootnote 1
Notice under section 46(1)(d) Day the notice is sent

III.5 Notification to the registrar

A party effecting service in an opposition proceeding must notify the Registrar of:

  • the manner of service employed; and
  • the effective date of service.

[section 46(8) of the Regulations]

Parties are expected to notify the Registrar about the manner and effective date of service of their documents on the other party when submitting their documents to the Registrar. For example, a covering letter attached to the documents submitted to the Registrar may state "service effected on the [applicant/opponent] by courier today".

Where service of a document in respect of an opposition has been effected in any other manner, pursuant to section 46(1)(e) of the Regulations, the notification to the Registrar should clearly indicate the manner of service (e.g. through the TMOB's E-Services or by email) and indicate that the party being served consented to this manner of service. In the absence of consent being clearly indicated in the notification, the Registrar will assume that the party being served agreed to service in this manner unless advised otherwise.

III.6 Proof of service

The Registrar may request proof of service of a document in an opposition proceeding, for example, in situations where there is a dispute between the parties with respect to whether service was effected [section 46(9) of the Regulations].

Such proof must be provided within one month from the date of the Registrar's request. If it is not provided within that time period, the document will be deemed not to have been served. Deadlines will not be suspended when proof of service is requested.

The proof of service required under section 46(9) of the Regulations will depend on the manner of service. The following will generally be accepted by the Registrar as proof of service:

Proof of service
Manner of service Acceptable proof of service
Personal service Affidavit of service from the individual effecting service, indicating: i) how service was effected; ii) who was served; and iii) the date of service; or other proof of service in accordance with the rules of civil procedure in the jurisdiction in which service took place.
Registered mail (or equivalent service) Print-out of tracking information or copy of receipt showing date of delivery to Canada Post.
Courier Print-out of tracking information or copy of courier slip showing date of delivery to courier.
Notice under section 46(1)(d) Signed statement from the serving party indicating the date and manner the notice was sent (e.g. regular mail, registered mail or courier).Footnote 2
Electronic means Facsimile: Copy of the confirmation of facsimile transmission indicating: i) the fax number of the serving party; ii) the fax number of the party being served; iii) the date and time of the transmission; and iv) the total number of pages transmitted (including cover page).

Email: Copy of sent email (excluding attachments), indicating: i) the name/email address to whom the email was sent; ii) the name/email address from whom the email was sent; and iii) the time and date the email was sent.

TMOB's E-services: Copy of the online confirmation request automatically generated by the system.

III.7 Irregular service

The Registrar will consider a document to have been validly served if the Registrar determines that it has been provided to the party being served [section 46(10) of the Regulations]. The effective date of service will be the day on which the document was provided to the party being served. The Registrar will confirm what it considers as the effective date of service at the time that it informs the parties of its determination.

If there is a lengthy delay between the time the document was provided to a party being served and the time the document came to the relevant person's attention, or between the date the document is provided to the party being served and the date the Registrar makes its determination under section 46(10) of the Regulations, the Registrar may consider granting an extension of time to the party being served for taking the next step.

IV Evidence

In general, the rules of evidence which are applicable in the Federal Court are applicable in opposition proceedings. While rulings on evidentiary matters will only be made at the decision stage and not during the course of an opposition proceeding, technical objections to the manner of submitting evidence should be made at the earliest opportunity.

Like any other document submitted to the Registrar, evidence must be made available to the public [section 29(1)(f) of the Act]. As such, it is recommended that parties be prudent when submitting evidence to the Registrar. Confidential business or personal information not essential material to a party's case in a proceeding but deemed sensitive by the party may be redacted before submission to the Registrar.

IV.1 Timing

The opponent's deadline to submit and serve its evidence (or a statement that it does not wish to submit evidence) is four months from the effective date of service of the applicant's counter statement [section 50 of the Regulations].

The applicant's deadline to submit and serve its evidence (or a statement that it does not wish to submit evidence) is four months from the effective date of service of the opponent's evidence or statement [section 52 of the Regulations].

The opponent's deadline to submit and serve evidence in reply (if any) is one month from the effective date of service of the applicant's evidence or statement [section 54 of the Regulations].

IV.2 Manner of submitting evidence

Evidence must be submitted to the Registrar by way of affidavit or statutory declaration. [section 49 of the Regulations].

In cases where a ground of opposition based on an allegation of confusion with one or more registered or applied for trademarks is pleaded by the opponent only [sections 38(2)(b) and 38(2)(c) of the Act], it is not necessary to submit by way of certified copy evidence consisting of a document or extract from a document that is in the official custody of the Registrar. It is common practice for the Registrar to exercise its discretion and consult the Canadian Trademarks Database to confirm that the registrations or applications pleaded by the opponent are in good standing. This practice, however, does not extend to checking the Canadian Trademarks Database to confirm the status of registrations or applications relied upon as part of state of the Register evidence.

IV.2.1 Evidence submitted in electronic form or by electronic means

Section 64(1) of the Act provides that any document, information or fee that is provided to the Registrar may be provided in electronic form and by electronic means as specified by the Registrar. This includes evidence. The form and means by which evidence may be electronically provided to the Registrar and served on the other party are set out in Electronic evidence in opposition and section 45 proceedings.

IV.2.1.a Remote commissioning of affidavits or statutory declarations

The Registrar requires that affidavits and statutory declarations filed as evidence in opposition proceedings be sworn, affirmed or solemnly declared.

The Registrar is accepting affidavits or statutory declarations commissioned remotely, provided that they are in compliance with the requirements of the jurisdiction in which the document was commissioned.

IV.3 Partial evidence

Since deadlines are calculated from effective dates of service, a party that plans to submit and serve its evidence in part prior to its evidence deadline should notify the Registrar and the other party in its cover letter that the initial evidence being submitted and served is partial evidence. In the absence of any indication to the contrary at the time the party submits its evidence, the Registrar will assume that it constitutes the whole of its evidence.

IV.4 Consequences for failure to submit and serve evidence

An application will be deemed abandoned under section 38(11) of the Act if the applicant does not submit and serve either evidence or a statement that the applicant does not wish to submit evidence within the prescribed time [section 53 of the Regulations]. Similarly, an opposition will be deemed to be withdrawn under section 38(10) of the Act if the opponent does not submit and serve either evidence or a statement that the opponent does not wish to submit evidence within the prescribed time [section 51 of the Regulations].

A party submitting a statement that it does not wish to submit evidence in accordance with section 50 or section 52 of the Regulations is not precluded from later seeking leave to submit additional evidence pursuant to section 55 of the Regulations. However, such a request will only be granted if it is in the interests of justice to do so (see section V below).

V Leave to amend pleadings or submit additional evidence

The Registrar will grant leave to amend a statement of opposition or counter statement [section 48 of the Regulations] or submit additional evidence [section 55 of the Regulations] if the Registrar is satisfied that it is in the interests of justice to do so having regard to all the surrounding circumstances including:

  • the stage the opposition proceeding has reached;
  • why the amendment was not made or the evidence not submitted earlier;
  • the importance of the amendment or the evidence; and
  • the prejudice which will be suffered by either party.

[McDowell v Automatic Princess Holdings, LLC, 2015 FC 980 and Dairy Processors Association of Canada v Dairy Farmers of Canada, 2014 FC 1054]

Requests for leave to amend a statement of opposition or counter statement must be accompanied by an amended statement of opposition or counter statement and the amendments must be clearly indicated with deletions shown in strike-through and additions shown in underline. If the party's correspondence or amended statement fails to show deletions in strike-through and additions underlined, the party may be asked to identify the specific changes at issue.

Requests for leave to submit additional evidence must be accompanied by at least a draft copy of the affidavit or statutory declaration which is proposed to be submitted.

Once written representations have been requested pursuant to section 57(1) of the Regulations, a request for leave to submit additional evidence must be accompanied by an indication that the deponent will be made available for cross-examination at the request of the other party.

A copy of a request for leave, together with a copy of the amended statement of opposition or counter statement or the affidavit or statutory declaration which is proposed to be submitted, must be sent to the other party. If the other party raises no objection to the request for leave, it will likely be granted.

VI Amended applications

Correspondence requesting that an application be amended must clearly state the nature of the changes requested. If the changes requested pertain specifically to the statement(s) of goods and/or services contained in the application, the applicant should file an amended application clearly showing deletions in strike-through and additions in underline.

If the applicant's correspondence or amended application fails to show deletions in strike-through and additions underlined, the applicant may be asked to identify the specific changes at issue.

VII Cross-examination

Before giving the parties notice that they may file written representations, the Registrar must, on the application of any party and on such terms as the Registrar may direct, order the cross-examination under oath of any deponent on the affidavit/declaration that has been submitted to the Registrar and is being relied on as evidence in the opposition [section 56(1) of the Regulations].

VII.1 Effect of a request for cross-examination on the prescribed deadline for submitting evidence

VII.1.1 Effect on applicant's evidence

The applicant's request for a cross-examination order has no effect on the prescribed deadline for the applicant to submit and serve its evidence. Accordingly, cross-examination orders will specify that they have no effect on any outstanding deadlines.

However, if an applicant's request for a cross-examination order is made within two months from the completion of all the section 50 evidence, the applicant may request an extension of time under section 47 of the Act for submitting and serving its section 52 evidence or statement and ask that the extension of time only begin to run from the completion of the cross-examination. If such an extension of time is requested, the Registrar will issue a cross-examination order granting the applicant an extension of time of four months from the completion of the cross-examination to submit and serve its section 52 evidence or statement.

If the applicant is in default of completing the cross-examination within the deadline fixed by the Registrar in the order, the four-month extension of time to submit and serve its section 52 evidence or statement will be automatically reduced to two months from the previously fixed deadline for completing the cross-examination or from the date on which the applicant informs the Registrar that it will not proceed with the cross-examination, whichever is earlier.

In cases where an applicant is granted the four month extension of time from the completion of the cross-examination to submit and serve its section 52 evidence or a statement (which may be reduced to two months) as detailed above, the Registrar will not also generally grant the applicant a further extension of time up to the maximum benchmark for filing its section 52 evidence as detailed under section X.1 below.

VII.1.2 Effect on opponent's reply evidence

If an opponent's request for a cross-examination order is made within one month from the completion of all the section 52 evidence, the opponent may request an extension of time under section 47 of the Act for submitting and serving its reply evidence and ask that the extension of time only begin to run from the completion of the cross-examination. If such an extension of time is requested, the Registrar will issue a cross-examination order granting the opponent an extension of time of four months from the completion of the cross-examination to submit and serve its section 54 evidence.

If the opponent is in default of completing the cross-examination within the deadline fixed by the Registrar in the order, the four-month extension of time to submit and serve its reply evidence will be automatically reduced to two months from the previously fixed deadline for completing the cross-examination or from the date on which the opponent informs the Registrar that it will not proceed with the cross-examination, whichever is earlier.

In cases where an opponent is granted the four month extension of time from the completion of the cross-examination to submit and serve its section 54 evidence (which may be reduced to two months) as detailed above, the Registrar will not also generally grant the opponent a further extension of time up to the maximum benchmark for filing its section 54 evidence as detailed under section X.1 below.

VII.2 Conducting cross-examinations

Nothing in this practice notice is intended to limit the discretion of the Registrar under section 56 of the Regulations. In this practice notice, references to the Registrar's orders specifying the period to conduct a cross-examination or how it must be conducted are intended as general guidance only. As such, any expressions stating that the Registrar will order certain terms in relation to cross-examination are intended to be interpreted as the Registrar will generally order certain terms in relation to cross-examination.

If the cross-examination cannot be arranged by mutual agreement, the Registrar will, on request, set the date, time, method and location for the cross-examination in accordance with section 56(2) of the Regulations as follows.

While parties may agree to conduct cross-examination in person, videoconference is the Registrar's preferred method of cross-examination.

VII.2.1 Conducting cross-examinations by videoconference

In cases where the method of cross-examination agreed upon by the parties or set by the Registrar is videoconferencing, the party conducting the cross-examination will:

  • conduct the cross-examination using a third-party virtual videoconferencing platform:
  • pay all expenses incurred in having their trademark agent available for cross-examination; and
  • bear the cost of all expenses necessary with respect to the cross-examination including the hiring of a reporter and the preparation and delivery of a copy of the transcript to the Registrar and service of it on the other party.

The party whose deponent is being cross-examined will:

  • pay all expenses incurred in having their deponent and trademark agent available for cross-examination, and the preparation and delivery of a copy of their responses to undertakings to the Registrar and service of the responses to undertakings on the other party.

To facilitate the conduct of a cross-examination by videoconference, parties must:

  • Agree in advance on a protocol that will govern the conduct of the cross-examination;
  • Select an appropriate videoconferencing platform that offers quality video imaging and audio;
  • Have deponents join the videoconference from an appropriate space that has good lighting, a neutral background and minimal ambient noises;

For examples of guidelines and best practices on how to conduct a cross-examination by videoconference or other electronic means, please refer to relevant jurisprudence (e.g. Rovi Guides, Inc. v. Videotron Ltd., 2020 FC 637).

Where cross-examination by video conference cannot be completed in a timely manner due to technical issues, a new order for cross-examination may be requested.

VII.2.2 Conducting cross-examinations in person

While agreement on the preferred method of cross-examination should be sought between the parties, in the absence of agreement, the Registrar will order that cross-examination take place by videoconference unless the balance of convenience does not favour this method. In deciding whether or not to order that cross-examination take place in person, the Registrar will have regard to the following:

  • the importance of the credibility of the deponent and of the evidence to the determination of the issues in the opposition;
  • the location and personal circumstances of the deponent including the deponent's proximity to the cross-examination site (e.g. within approximately 100 km) or whether a deponent is unable to attend in person because of disability; illness; restrictions on travel or in-person meetings; or any other reason;
  • the costs that would be incurred if a deponent had to be physically present;
  • the costs that would be incurred if cross-examination by videoconference is ordered;
  • the delay that would be incurred if cross-examination in person is ordered; and,
  • the prejudice to the parties, including whether prejudice could arise from practical difficulties, which could undermine the ability of a party to conduct a full cross-examination.

VII.3 Submission and service of transcripts and answers to undertakings

Parties are required to submit to the Registrar and serve on the other party documents related to a cross-examination as follows [section 56(3) of the Regulations].

The party who conducted the cross-examination:

  • must submit to the Registrar and serve on the other party the transcript and the exhibits of the cross-examination; and

The party that was cross-examined:

  • must submit to the Registrar and serve on the other party any information, document or material that they undertook to provide in the course of the cross-examination.

Each party's respective deadline will be specified by the Registrar in the cross-examination order.

Answers to undertakings that are submitted and served before the deadline to file and serve the transcripts and exhibits will be made of record. It is only once the transcripts and exhibits have been submitted and served will the Registrar consider the cross-examination stage as complete. In such cases, where applicable, the deadline to submit and serve evidence will run from the date the transcripts and exhibits have been submitted and served.

VII.4 Failure to comply with cross-examination submission and service requirements

VII.4.1 Failure to submit and serve transcript

If the party who conducted the cross-examination does not submit and serve the cross-examination transcript, the other party can request a copy of the transcript from the reporter and request leave to submit it as additional evidence under section 55 of the Regulations.

VII.4.2 Failure to submit and serve answers to undertakings

The Registrar will not make rulings during the course of an opposition as to whether certain questions asked in cross-examination should be answered or whether answers given are adequate.

Failure to answer proper questions or submit and serve answers to undertakings may, however, result in negative inferences being drawn or in the affidavit or statutory declaration being ignored at the decision stage [Joseph E Seagram & Sons Ltd et al v Seagram Real Estate Ltd (1984), 3 CPR (3d) 325 at 332 (TMOB)].

VII.5 Inadmissibility of affidavit or statutory declaration

Failure by the deponent to attend a cross-examination shall result in the affidavit or statutory declaration not being part of the evidence [section 56(4) of the Regulations].

VIII Written representations

The Registrar will give the parties notice that they may submit and serve written representations sequentially after the reply evidence stage has closed [section 57 of the Regulations].

If the parties are awaiting a ruling on a request for leave to file additional evidence or for cross-examination to be completed, the Registrar may consider granting an extension of time for a party to submit and serve written representations on this basis.

Parties who do not submit and serve written representations by the prescribed deadline may still file a request for hearing.

VIII.1 Opponent

The time within which the opponent may submit and serve its written representations or statement that no representations will be submitted (statement) is two months from the date of the Registrar's notice inviting parties to submit and serve written representations [section 57(2) to section 57(4) of the Regulations].

VIII.2 Applicant

The time within which the applicant may submit and serve its written representations (or statement) is as follows [section 57(5) to section 57(7) of the Regulations].

Where the opponent has submitted and served written representations (or a statement) within the prescribed time:

  • two months from the effective date of service of the opponent's written representations (or statement).

Where the opponent has not submitted and served written representations (or a statement) within the prescribed time:

  • two months from the expiry of the opponent's deadline to submit and serve its written representations.

IX Hearings

A party may only make representations at a hearing if they file a request for hearing in accordance with the requirements set out in section 58(1) of the Regulations.

A party's request for hearing may be conditional on the other party also requesting to be heard, as long as the information required is set out in the request and the request is filed within the prescribed time [section 58(1) of the Regulations]. If both parties file requests to be heard that are conditional on the other party also requesting to be heard, a hearing will not be scheduled and a decision will be issued.

IX.1 Timing

The time within which a party must give the Registrar written notice of its request for hearing is as follows [section 58(1) of the Regulations].

Where the applicant has submitted and served its written representations (or statement) on the opponent within the prescribed time:

  • one month from the effective date of service of the applicant's written representations (or statement).

Where the applicant has not submitted and served its written representations (or statement) within the prescribed time:

  • one month from the expiry of the applicant's deadline to submit and serve its written representations (or statement).

IX.2 Request for hearing

The Registrar considers videoconference to be the preferred method for the conduct of hearings. As such, all hearings are by default scheduled by videoconference. Hearings by teleconference or in person may also be requested. Hearings in person will only be scheduled on an exceptional basis and if administratively possible.

The request for hearing must specify the following information:

  • if the party wishes to make representations by a method other than videoconference, the type of method requested (namely in person or by teleconference) and an explanation as to why a method other than videoconference is requested;
  • whether the party will make representations in English or French;
  • whether simultaneous interpretation will be required if the other party to the opposition makes representations in the other official language; and
  • as the case may be, any request to have a hearing longer than two and a half hours, as well as the reasons why the party considers this necessary.

[sections 58(1)(a) and (b) of the Regulations]

If a party has not furnished the specific information required by the Registrar in its request for hearing as detailed above, the Registrar will schedule the hearing by videoconference for two and a half hours, with representations to be made in the official language in which the request for hearing was made with no arrangements for simultaneous interpretation.

IX.3 Changes to hearing request

If a party who has requested to be heard wishes to make any changes with respect to their appearance at a scheduled hearing then the party should, as soon as possible and no less than one month prior to the scheduled hearing date, communicate such changes to the Registrar by sending confirmation of the changes with respect to their appearance by e-mail to ised.cipohearing-opicaudience.isde@canada.ca.

No changes with respect to a hearing will be made until a request is received in writing (an email is sufficient). While reasonable efforts will be made, the Registrar may not be able to accommodate changes that are requested less than one month before the date of the hearing.

IX.4 Scheduling of hearings

Approximately 90 days prior to the hearing, the Registrar will issue a notice to the parties setting out the time, date, location, manner and duration of the hearing, the official language(s) in which representations will be made, and whether simultaneous interpretation will be provided.

Parties are encouraged to notify the Registrar as soon as possible if a hearing is no longer required. (see also section IX.6 on Cancellation of hearing)

One month prior to the scheduled hearing date, the Registrar will communicate with the parties to confirm that the hearing is still required.

The list of planned and scheduled hearings is available on CIPO's website.

IX.4.1 Rescheduling a hearing

The Registrar may reschedule a hearing once, upon request. If a party wishes to reschedule a hearing, a request to the Registrar must be submitted as soon as possible once the hearing date has been provided and set out the following information:

  • Reason(s) explaining why the party is not able to proceed on the scheduled hearing date;
  • If both parties were attending the hearing, a statement to the effect that consent to reschedule the hearing was obtained from the other party. If such consent could not be obtained, an explanation as to why it was not possible should be provided.

Upon receipt of the request, the Registrar will decide whether it should be granted. In appropriate circumstances, the Registrar may grant a request to reschedule without consent from the other party. If the request is granted, both parties will be advised of the new date for the hearing. In order to avoid unnecessary delays in proceedings, hearings will be rescheduled as soon as administratively possible.

In cases where a hearing is rescheduled the Registrar will, whenever administratively possible, arrange for the hearing to be rescheduled with the same Member.

IX.5 Simultaneous interpretation

Parties are entitled to make representations in either English or French at the hearing, but must indicate their preference in the request for hearing. The Registrar will provide simultaneous interpretation in English and/or French, provided that the Registrar has no less than one-month notice in advance of the scheduled hearing date.

IX.6 Cancellation of hearing

If a party who has filed a request for hearing no longer wishes to attend a hearing, the party should, as soon as possible and no less than two weeks prior to the scheduled hearing date, communicate such cancellation to the Registrar by e-mail to ised.cipohearing-opicaudience.isde@canada.ca.

If both parties requested a hearing, it will only be cancelled if both parties consent to the cancellation. A hearing will not be cancelled until such time as the party or parties' request for cancellation is received in writing (an email is sufficient).

If a hearing is cancelled, the Registrar will proceed to issue a decision in due course, except in cases where the application has been abandoned or the opposition has been withdrawn.

IX.7 Jurisprudence

At the hearing, the Member will have a copy of all case law included in the Common List of Authorities (Common List), which identifies the cases that are frequently cited in opposition and section 45 proceedings.

At least two weeks prior to the hearing date, parties must provide to the Registrar by e-mail to ised.cipohearing-opicaudience.isde@canada.ca or through the General Correspondence tab of the Trademarks Opposition Board E-services, and to one another:

  • their list of case law; and
  • copies of any TMOB decisions to be relied upon at the hearing which are not available on CIPO's website or are otherwise unreported.

IX.8 Videoconference hearings

For hearings held by videoconference, parties should adopt the following practices, to render their participation in the hearing as effective as possible:

  • Participate in the hearing from an appropriate space that has good lighting, neutral background and minimal ambient noises;
  • Use a computer, tablet or smartphone equipped with a camera (webcam) and speakers;
  • Use headphones equipped with a microphone;
  • Have access to a telephone throughout the hearing, since this will be the means by which the Member will communicate with the parties if there are technical issues during the hearing;
  • Ensure that they have a stable and strong Internet connection that can support videoconferencing;
  • Ensure that they can appropriately use the videoconferencing technology;
  • Test the videoconferencing technology in advance of the hearing, preferably from the same location where they will be participating in the hearing;
  • Log in early; and,
  • During the hearing, use the screen sharing functionality of the videoconferencing platform to direct participants to parts of case law, decisions, evidence, written representations or any other document.

IX.9 Technical difficulties during videoconference or teleconference hearings

In the first few minutes of the hearing, the Member will canvass participants for their email addresses and telephone numbers where they can be reached for the duration of the hearing. If there are technical issues during the course of the hearing, the Member will contact each participant by email and/or telephone to indicate how the hearing will proceed (for example, after a short adjournment or using the telephone number provided for audio only).

X Extensions of time

Statutory/administrative deadlines and available extensions of time at each stage of the proceeding
Stage of proceeding Statutory or administrative deadline Benchmark extension One cooling off extension for each party Extensions of time based upon exceptional circumstances
Statement of opposition 2 months from the date of advertisement of application on the CIPO website 4 months Up to 9 months on consent Determined on a case by case basis
Counter statement 2 months from the date that that the Registrar forwards statement of opposition 2 monthsFootnote 3
Opponent's evidence 4 months from the effective date of service of counter statement Up to 3 months with the other party's consent
Applicant's evidence 4 months from the effective date of service of opponent's evidence (or statement) Up to 3 months with the other party's consent
Cross-examination Within the period specified by the Registrar in the notice of cross-examination Up to 2 months with the other party's consent
Cross-examination – replies to undertakings Within the period specified by the Registrar in the notice of cross-examination Up to 1 month with the other party's consent
Opponent's reply evidence 1 month from the effective date of service of the applicant's evidence (or statement) Up to 4 months with the other party's consent
Opponent's written representations 2 months from the date of the Registrar's notice under section 57(1) of the Regulations Up to 2 months with the other party's consent
Applicant's written representations 2 months from the earlier of the effective date of service of the opponent's written representations (or statement) or the expiry of such deadline Up to 2 months with the other party's consent
Request for hearing 1 month from the earlier of the effective date of service of the applicant's written representations (or statement) or 1 month from the expiry of such deadline Not available Not available -

All requests for an extension of time of a deadline fixed by the Act or prescribed by the Regulations pursuant to section 47(1) of the Act (statutory deadlines) must be accompanied by the prescribed fee [section 14 of the Regulations and Item 1 of the Schedule to the Regulations].

Requests for extensions of time of deadlines not fixed by the Act or prescribed by the Regulations (administrative deadlines) do not require payment of any fee.

X.1 Extensions of time – benchmarks

Section 47 of the Act is discretionary, allowing the Registrar to grant extensions of time fixed by the Act or prescribed by the Regulations if the Registrar is satisfied that the facts justify the need for an extension of time [Sandhu Singh Hamdard Trust v. Canada (Registrar of Trademarks) (2007), 62 CPR (4th) 245 (FCA), affirming 47 CPR (4th) 373 (FCTD)].

The Registrar will grant only one request for an extension of time up to each of the benchmarks detailed in the chart above. The Registrar has established benchmarks in order to provide guidance, transparency and fairness with respect to the manner in which the Registrar will exercise discretion under section 47 of the Act with respect to the granting of extensions of time at each stage of opposition proceedings.

The Registrar will not grant more than one request for a benchmark extension of time at a particular stage even where such multiple requests would only amount to the maximum benchmark.

X.2 Extensions of time – cooling off period

A party facing a deadline can request an extension of time based on "cooling off" in addition to the benchmark extension.

Statistically, the vast majority of opposition cases settle before the Registrar issues the final decision and the best resolution in any dispute is often a settlement reached by the parties involved [see CIPO's webpage on Alternative Dispute Resolution (ADR)]. Accordingly, in an effort to encourage settlement or mediation, the Registrar will grant each party one extension of time up to a maximum of nine months, on consent, which may be requested by the party facing a deadline at any stage up to and including the filing and serving of the applicant's written representations.

The Registrar considers that the practice of granting each party one extension of time amounting to the possibility of an eighteen-month cumulative cooling off period should provide parties with a reasonable period of time in which to pursue and finalize settlement of the trademark opposition.

If the parties fail to settle the opposition proceeding within the cooling off period, the parties must carry on with the opposition proceeding and comply with the legislative and regulatory requirements whether or not the parties are continuing their settlement negotiations and/or mediation of the opposition.

X.2.1 Opting out of cooling off

When granting a cooling off extension, the Registrar will specify that the extension will be granted until the earlier of the duration of the cooling off period initially consented to or one month after the consenting party notifies the Registrar in writing that it has withdrawn its consent to the extension of time. The party who requested the cooling off extension may end the cooling off period by taking the necessary step to meet its extended deadline.

X.3 Extensions of time – exceptional circumstances

The Registrar will grant an extension of time beyond the benchmark if the Registrar determines that the party has demonstrated exceptional circumstances justifying a further extension of time.

All requests for an extension of time beyond the maximum benchmark should be clearly marked "Exceptional circumstances /extension request."

Following are examples of what the Registrar may consider exceptional circumstances justifying a further extension of time.

X.3.1 Co-pending opposition proceedings

If there are co-pending opposition proceedings in Canada between the same parties for related trademarks, the Registrar may grant an extension of time beyond the benchmark to synchronize deadlines between the proceedings for completing the same requirement.

X.3.2 Recent change in the party's instructing principal or trademark agent

If there has been a very recent change in the party's instructing principal or trademark agent, the Registrar may grant an extension of time allowing a reasonable period of time to enable the new trademark agent or instructing principal to become familiar with the file.

X.3.3 Circumstances beyond the control of the person concerned

Examples of factors that could amount to exceptional circumstances beyond the control of the person concerned include illness, accident, death, bankruptcy or other serious and unforeseen circumstances.

X.3.4 Assignment

There has been a recent assignment of either the trademark that is the subject of opposition or a trademark application or registration being relied upon by the opponent in the opposition proceeding.

X.3.5 Revised application

A revised application for the trademark that is the subject of the opposition has been filed with the Registrar and the revision, if accepted by the Registrar, would put an end to the opposition proceeding or substantially change the nature of the opposition proceeding.

X.3.6 Finalizing settlement

Either the applicant or the opponent may request one further extension of time in addition to the benchmark and cooling off extensions in order to fully finalize and complete settlement negotiations. While this request can be made by either party, the Registrar will only grant this extension of time once during the course of an opposition proceeding up to a maximum period of three months on consent.

Once either the applicant or the opponent has been granted this extension of time the Registrar will not grant a further extension of time for this purpose to either party at any time during the opposition proceeding.

X.3.7 Circumstances at the cross-examination stage

Subject to the diligence of a party in conducting/completing cross-examination, the following are examples of additional circumstances that may be considered as exceptional at the cross-examination stage:

  • the need to schedule multiple cross-examinations;
  • waiting for the transcript or replies to undertakings of a recent cross-examination; or
  • the terms of the cross-examination order apply to a recently substituted affidavit or statutory declaration.

Given that the preferred method of cross-examination is by videoconference, an extension of time beyond a benchmark extension to make travel arrangements will not be considered an exceptional circumstance.

X.3.8 Third party rights

The Registrar will not consider the filing of a notification of third party rights to be an exceptional circumstance justifying a further extension of time.

X.4 Extensions of time – retroactive

If a party is facing a statutory deadline that has already passed, the Registrar may consider a request for a retroactive extension of time [section 47(2) of the Act].

Requests for a retroactive extension of time must:

  • be accompanied by the prescribed fee [section 47(2) of the Act, section 14 of the Regulations and Item 1 of the Schedule of the Regulations]; and
  • include sufficient facts for the Registrar to determine that the failure of the party to meet its deadline or apply for an extension within the time limit was not reasonably avoidable [Kitchen Craft Connection Ltd v Canada (Registrar of Trade Marks) (1991), 36 CPR (3d) 442 (FCTD)].

The Registrar will not grant a retroactive extension of time pursuant to section 47(2) of the Act in respect of a particular stage of an opposition proceeding if the proceeding has advanced to a subsequent stage.

XI Decision

After considering the evidence and representations of the parties, the Registrar will render a final decision in writing, in accordance with section 38(12) of the Act, to refuse the application, reject the opposition, or refuse the application with respect to one or more of the goods or services specified in it and reject the opposition with respect to the others.

The Registrar will not hold decisions in abeyance or agree not to issue a decision based on consent of the parties and/or pending settlement negotiations.

In the absence of a court order, the Registrar has no authority to stay opposition proceedings pending the outcome of court litigation [Anheuser-Busch Inc v Carling O'Keefe Breweries of Canada Ltd (1982), 69 CPR (2d) 136 (FCA)].

XII Appeals

The decisions of the Registrar under sections 38(4) and 38(12) of the Act may be appealed to the Federal Court [section 56 of the Act]. Appeals must be filed in accordance with the Federal Courts Act and the Federal Courts Rules and filed with the Registrar in accordance with section 56(2) of the Act. See Service of Documents on the Registrar of Trademarks for further information.

This practice notice is intended to provide guidance on the Canadian Intellectual Property Office practice and interpretation of relevant legislation. However, in the event of any inconsistency between this notice and the applicable legislation, the legislation must be followed. The provisions of this practice notice are general guidelines only, are not binding in any particular case and are subject to change.

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