Canada Considers Changes to Trademarks Opposition Process
Today the Trademarks Opposition Board ("TMOB") announced a consultation period from June 28th to September 20, 2010. The amendments, largely intended to streamline the opposition process and communications between the parties and the TMOB, include:
- The potential for electronic transmission of evidence, provided that the submitting party maintain originals for a prescribed timeframe;
- Adjustment to "service" requirements to allow for service via fax for documents not exceeding 25 pages (without consent) or in any other manner, with consent, including via email;
- Consideration is being given to deleting "evidence in reply" (s. 43 of the Regulations) altogether and to instead offer the parties to simply file additional evidence by seeking Leave of the Registrar, where necessary;
- The TMOB is considering imposing a three-month window to complete cross-examination and requiring that the parties file evidence sequentially prior to opening the cross-examination period. While this initiative is laudable (particularly when considering the impact of delays resulting from the cross-examination process and the current practice of requiring the parties to file evidence regardless of an ongoing cross-examination process), the truncated timelines are likely too abbreviated to accommodate business realities including foreign applicants and/or instructing principals, translation requirements, etc.
- Additional clarity may be introduced to expressly require that a party cross-examining a witness must file transcripts (as is currently the case), however, the party being examined will be required to file undertakings within a prescribed timeframe. Current requirements were somewhat unclear in this respect (i.e. placing the onus upon the cross-examining party) and thus it is expected that such a change will be well received.
- The TMOB is seeking comment as to whether they can do away with the current practice of providing the parties with a written notice imposing deadlines to file Written Argument. Instead, the TMOB is suggesting that a prescribed timeframe may be appropriate to more efficiently process opposition matters. While the intent appears appropriate, the current notice is often received by or on behalf of Applicants and Opponents as a confirmation that the evidence period is closed. Indeed, without such notice a party may prepare submissions based upon incomplete evidence. Accordingly, the TMOB is considering offering the parties an opportunity to file "additional written arguments". To the extent that the overall objective is to avoid administrative delay, introducing this additional step may not only result in confusion (i.e. as a departure from current practice) but may, in fact create additional administrative work for the TMOB. Moreover, in view of the likelihood of administrative errors during any transition toward such a procedural change (i.e. missing deadlines), and the consequence of such errors (i.e. deemed abandonment), combined with a general lack of a reasonable a "curative" process to resolve technical or administrative errors, it would be appropriate for the TMOB and Trade-marks Branch to consider the introduction of such a curative process.
- Transitional provisions are being proposed to avoid the current dual system of opposition deadlines. In view of the many positive changes to timelines, this suggestion will likely be well received.
- Lastly, several miscellaneous matters are being considered to clarify the Regulations and modernize filing requirements. The Trade-marks Branch has not offered specificity on all of the revisions under consideration and thus the Consultation Period will afford interested parties to offer suggestions to improve the application and opposition process.
Overall, many of the proposals outlined are positive and will certainly modernize the opposition process while recognizing the benefits to enabling usage of "modern" technologies for communications between the parties. Nevertheless, offering a clear "curative" process (i.e. separate and apart from Leave of the Registrar) to address administrative errors may ease the implementation period - particularly where the consequence of a failure to file may result in the deemed abandonment of an application or opposition.
