In March 2020, all institutions were forced to adapt to the then-novel threat of COVID-19. The Canadian Trademarks Opposition Board was no exception. The Board is an administrative body that acts on behalf of the Registrar of Trademarks with respect to trademark oppositions (a process whereby third parties can oppose an application to register a trademark), and summary cancellations under Section 45 of the Trademarks Act (a process through which third parties can ask to remove a trademark registration from the Register based on non-use of that trademark).
Among other measures, the Opposition Board adopted criteria for the granting of extensions of time on more flexible bases than would typically be available. For example, 3-month extensions were granted if the inability to meet a pre-existing deadline was due to the pandemic.
In a recent announcement, the Opposition Board stated that this temporary regime for the granting of extensions of time will be phased out as of September 1, 2021. As of that date, extensions of time beyond the normal benchmarks will only be granted if the person affected can demonstrate exceptional circumstances beyond their control, such as illness, accident, death, bankruptcy, or similar situations.
Other measures adopted by the Opposition Board recognize the role that technology has come to play in adverse proceedings, specifically with respect to the remote commissioning of affidavits, and the use of videoconferencing for cross-examinations and hearings.
With respect to the remote commissioning of affidavits:
- The Registrar will accept remote commissioning as long as it is done in accordance with the practice of the jurisdiction where the document is commissioned. (In Ontario, for example, guidance regarding remote commissioning can be found here: https://lso.ca/lawyers/practice-supports-and-resources/topics/the-lawyer-client-relationship/commissioner-for-taking-affidavits-and-notary-publ/l%E2%80%99attestation-a-distance.)
With respect to cross-examinations:
- Conducting these through videoconferencing will be the default, unless the parties agree to have the cross-examinations take place in person.
- Parties must use a third party virtual videoconferencing platform with quality video and audio feeds.
- Parties must agree in advance on a protocol to govern the conduct of the cross-examination.
- Witnesses must attend from an “appropriate” space with good lighting, a neutral background and minimal ambient noises.
- Case law can be referred to when considering best practices; see, for example Rovi Guides, Inc. v. Videotron Ltd., 2020 FC 637.
Finally, the Opposition Board has updated its Practice Notice regarding the mechanics for serving and filing materials electronically: see Electronic evidence in opposition and section 45 proceedings.
These changes to trademark opposition practice can be taken as a sign that we are entering a post-COVID world, where deadlines are expected to be met, and where technology is here to stay.