JURISDICTION REPORT: CANADA
FACELIFT FOR TRADEMARK OPPOSITIONS?: CANADA’S PROPOSED AMENDMENTS
Victoria Carrington and Nihan Keser Shapiro Cohen
Canada’s Intellectual Property Office (CIPO) recently announced proposed amendments to the Trademarks Regulations in anticipation of both reducing the operational costs for businesses and increasing the overall effectiveness of trademark opposition procedures. Tese proposed changes reflect Canada’s efforts to modernise and streamline its trademark opposition regime. Te aim is also to keep up with international standards and trading partners, such as the European Union and Australia, which are also considering ways to improve and streamline their respective opposition regimes.
One of the key proposed amendments concerns filing electronic evidence. Given the increased use of electronically transmitted documents and the acceptability of filing electronically with other Canadian courts and tribunals, such delivery may be equally acceptable in opposition proceedings. Te proposed e-filing requirements would facilitate filing documents such as electronic sworn affidavits or solemn declarations, provided that they are consistent with the rules of the Federal Court of Canada and the practices of other Canadian tribunals.
Similarly, further consideration is being allotted to simplifying the methods that parties can use to serve their documents by electronic means, either by fax (without consent if the document does not exceed 25 pages) or by electronic transmission, which includes serving documents by email (only with consent of the other party).
Te recent proposals also consider revamping the cross-examination process in opposition proceedings. Currently in Canada, the “trademark opposition proceedings generally take between two to five years to reach decision”, which includes “the cross-examination stage with parties taking on average more than one full year to conduct each of their respective cross-examinations”. As a consequence, the problem of undue delays and complexity that may arise during this stage is oſten unnecessary when in the end, the requesting party does not even proceed with cross-examination. For example, “between January 2005 and March 2010, only 37 percent of those who requested an order for cross-examination in fact proceeded to conduct the cross-examination requested”.
As a result, the Registrar is considering amending the regulations to prescribe a three-month deadline to conduct cross-examinations following the filing of the applicant’s evidence, which would enable all cross-examinations to be completed by both parties within six months of the filing and serving of the applicant’s evidence (as per section 42 of the regulations). Tis proposal “would require parties to put their best evidence forward from the outset and may encourage settlement at an earlier stage of the proceedings”.
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“ THE AIM IS ALSO TO KEEP UP WITH INTERNATIONAL STANDARDS AND TRADING PARTNERS, SUCH AS THE EUROPEAN UNION AND AUSTRALIA, WHICH ARE ALSO CONSIDERING WAYS TO IMPROVE AND STREAMLINE THEIR RESPECTIVE OPPOSITION REGIMES.”
Additionally, “consideration is being given to requiring parties to confirm in writing with the Registrar the intention to conduct cross-examinations”, which would ensure that cases would proceed expeditiously to the next stage if no cross-examinations are to take place. Subsequent to any cross- examinations, a proposed provision aims to ensure that there is only “a one-month prescribed deadline following the completion of the cross- examinations to file all of the required transcripts and undertakings”.
Lastly, administrative deadlines are being proposed following the completion of cross-examinations, which would set a three-month prescribed deadline for the opponent to file and serve its written arguments, followed by another three months for the applicant to file and serve its own written arguments. Currently, “the process of issuing notices setting administrative deadlines is not efficient or in keeping with the practices of other tribunals or the Federal Court of Canada”. Te proposed provision for setting administrative deadlines would stop the Registrar having to bear the current “responsibility for receiving and then forwarding copies of the written arguments to the parties, once they are filed”, and then subsequently setting any deadline for the hearing.
Te initial CIPO consultation period for submitting comments on these proposed amendments concluded on September 20, 2010. While giving general support to the overall principles recommended by CIPO, there is a bit of concern at this early stage in the process about the abbreviated timelines and the general need to ensure that streamlining the procedural steps from CIPO’s perspective does not occur at the expense of clarity as to the actual deadlines.
To address submitted concerns, CIPO may consider additional consultations in the future to advance the proposed amendments.
Dr. Victoria Carrington is a partner at Shapiro Cohen. She can be contacted at:
vcarrington@shapirocohen.com
Nihan Keser is an associate lawyer at Shapiro Cohen. She can be contacted at:
nkeser@shapirocohen.com
World Intellectual Property Review November/December 2010 79
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