Canada’s trademark law is changing, and these changes will be coming into force on June 17, 2019. The sweeping changes which the new law will usher in are the most significant since the 1950’s. We therefore thought it was appropriate to take a deep dive into the new legislation, to briefly outline the main areas of change, and how trademark owners will be impacted.

There have been a number of refinements to the opposition and Section 45 cancellation proceedings, although the format of the proceedings themselves remain intact.

Oppositions

A new ground of opposition is being introduced, based on an allegation that the applicant did not propose to use the mark or has not used the mark in Canada, but it is assumed that under the new law it will be very difficult to prove this new ground of opposition.

The applicant can request that the Registrar strike all or part of the Statement of Opposition up to the day before a Counterstatement has been filed, based on an allegation that the grounds of opposition have not been set out in sufficient detail to enable the applicant to apply to them.

A simplified counterstatement is being introduced, which requires the applicant to merely state that the applicant intends to respond to the opposition.

The new procedures will apply to all applications which have not been advertised as of the coming into force date.

In oppositions, the electronic filing of evidence will now be permitted, and the effective date of service is the date on which the document is transmitted.

There will now be clear fixed deadlines for the filing and service of evidence and the time limits will no longer be calculated from the date of service of the other party’s evidence. The deadlines will be calculated from the expiration of the period of time after the filing of the preceding document. In all opposition proceedings, the applicant must set out an address for service. The failure to serve evidence or a statement that a party does not intend to submit evidence will now result in withdrawal of an opposition or the abandonment of an application. The deadlines for service of evidence are as follows: four months for all for the opponent’s evidence; four months for the applicant's evidence, and one month for reply evidence.

With respect to the filing of additional evidence, the Registrar must now grant leave unless it is not in the interests of justice to do so.

Parties must serve on the other party all materials filed with the Trade Marks Opposition Board, with the exception of the Statement of Opposition.

In cases where it is deemed appropriate, case management may be invoked in order to determine timetables.

With respect to cross-examinations, parties will no longer be required to obtain an order permitting cross-examination. Cross-examination can now be requested at any time prior to the date on which the parties are asked to submit written representations. The party conducting a cross-examination will be responsible for filing and service of the transcript, and the other party is responsible for the service and filing of the responses it provides to undertakings.

The new law will also permit the sequential filing and service of written arguments.

Written representations will now be filed and served sequentially, with the opponent filing first, two months from the date of the notice and the applicant will file two months from that date. These time lines will apply to both opposition and section 45 proceedings.

With respect to hearings, the Regulations have been changed so that if a party does not file a request as to the method of conducting the hearing, they may not make representations at the hearing. There will no longer be a notice forwarded to the parties requiring the parties to request a hearing. In an opposition, the hearing must be requested within one month after the written representations of the applicant have been filed or were due.

Section 45 Proceedings

Like the parties, the Registrar will now be required to wait three years following the date of registration in order to commence non-use cancellation proceedings.

Section 45 proceedings can now be requested for specific goods and services.

If evidence or written representations are not served, then the Registrar will not be required to consider them. In all Section 45 proceedings, the party effecting the service must notify the Registrar of the manner of service and the effective date of service and the Registrar may request proof of same.

In section 45 proceedings, there will now be prescribed deadlines for filing written representations and requests for hearings. The procedures in section 45 proceedings will now be more closely aligned with those in opposition proceedings. Hearings must be requested within one month after the registered owners’ service of its written representations, or the expiry of the time limit for doing so.