The Madrid Protocol provides a centralized system for trademark owners to file, register, renew and maintain international trademarks and, since June 17, 2019, it has been possible for applicants to designate Canada in international applications. Now, over two years since Canada’s accession to the Protocol, a number of Protocol applications (about 10 percent of all Protocol applications filed) have proceeded through examination and are eligible for third party opposition, making it good time for parties to refamiliarize themselves with the differences between the opposition process for domestic (Canadian) and Protocol applications.
Once a Statement of Opposition has been filed, oppositions against domestic and Protocol applications generally follow the same process. However, there are important differences at the outset of an opposition against a Protocol application which could prove fatal to the opposition if they are not taken into account. Of particular note is the deadline by which a Statement of Opposition must be filed to commence an opposition proceeding. For domestic applications, this deadline can be extended by a benchmark extension of up to four months and a further extension of nine months for “cooling-off” purposes. In total, a Statement of Opposition against a domestic application can be filed up to 13 months after the close of the advertisement period, and sometimes even further, if exceptional circumstances exist. In contrast, a Statement of Opposition against a Protocol application must be filed no more than four months after the close of the advertisement period (section 125 Trademarks Regulations). This means the initial opposition deadline (which is two months from the date of advertisement) is not extendable beyond four-months, regardless of the consent of the parties or whether exceptional circumstances exist – a further cooling off period is not available before filing a Statement of Opposition. This firm deadline is required to ensure that the Trademarks Opposition Board (TMOB) is in compliance with Article 5(2)(c) of the Madrid Protocol, requiring the TMOB to notify the International Bureau (IB) of an opposition of a Protocol Opposition no later than seven months from the date on which the opposition period begins. Since the opposition period in Canada begins at the start of advertisement, which is a two-month period, a single benchmark extension of four months brings the timeline from advertisement to six months, giving the TMOB one month to notify the IB of an opposition, as required by the Protocol. The TMOB has also recently clarified that retroactive extensions under section 47(2) of the Trademarks Act are available in relation to filing a Statement of Opposition in a Protocol application, so long as the request is justified and, more importantly, the extended deadline is not longer than six months from the date on which the opposition period began.
Given the strict timeline for opposing a Protocol application, the TMOB requires a Statement of Opposition to be prepared and filed by way of TMOB e-services. Online filing supports the TMOB in meeting deadlines set by the Protocol and the use of the electronic Statement of Opposition form ensures that parties are providing the TMOB with the necessary information to be submitted to the IB under section 127 of the Trademark Regulations. The TMOB cautions against submitting a Statement of Opposition in any other format, such as a PDF attached to the electronic Statement of Opposition form (which is often done for domestic oppositions), due to the possibility of introducing discrepancies and improperly pleading grounds of opposition relevant to Protocol applications.
A final consideration, given additional deadlines for opposing Protocol applications, are restrictions related to adding new grounds of opposition (section 128 Trademark Regulations). Since the TMOB must inform the IB of oppositions in Protocol applications and the scope of provisional refusal (i.e., grounds of opposition), no new grounds of opposition may be added to a Statement of Opposition. In some cases, amendments to existing grounds may be considered a new ground, “if the amendment substantially changes the basis on which this ground was originally pleaded”. However, the TMOB has recently advised that an amendment to include a section 12(1)(d) ground of opposition (that the applied-for mark is confusing with a registered mark) on the basis of an application proceeding to registration during the term of the opposition will not be considered a new ground of opposition, so long as the corresponding application was initially referenced in the Statement of Opposition. Opponents to Protocol applications that wish to file a skeletal opposition to preserve rights, and at the same time wish to be careful with respect to the position advanced, will need to tread carefully, particularly as Canadian practice evolves to manage a cooling off period being unavailable.
Given strict timing and filing requirements for opposing Protocol applications, parties considering opposing a Protocol application should also acquaint themselves with the procedures set out in the practice notice Opposition to Protocol applications and section 45 cancellation proceedings against Protocol registrations and should consult a Canadian trademark professional to ensure compliance with the applicable rules, regulations and practice.