It seems that the Opposition Board spends more time drafting new practice notices or proposed amendments to the Trade-Marks Regulations than handling opposition files.
Recently, the Opposition Board presented a series of proposed regulatory amendments affecting the opposition process. Noteworthy in the proposal are the elimination of reply evidence, the modification of the cross-examination process and the sequential filing of written arguments. Also proposed are the elimination of certain notices currently issued by the Board and the electronic filing of opposition evidence.
Eliminating the reply evidence stage from the opposition process should have little impact in most opposition cases since the opponent can request leave to file further evidence under current subsection 44(1) of the Regulations. Moreover, in many instances, reply evidence is "not strictly confined to matter in reply" to the applicant's evidence.
From the Gill Study of opposition files conducted in the late 1990s, less than 11% of oppositions result in an order for cross-examination being issued by the Board. Thus, about ten cross-examination requests on average are received monthly by the Board. Nevertheless, delays exceeding two months awaiting the issuance of an order for cross-examination by the Board are certainly not uncommon.
Orders for cross-examination are often abused by parties in that orders for cross-examination, particularly of foreign affiants, are obtained and then not pursued by the parties carrying the orders once they determine that the affiants will be made available in Canada for cross-examination.
The Board has also proposed the sequential filing of written arguments in place of the current regulation that provides for the concurrent filing of arguments. Since this proposal lengthens the opposition process, it is difficult to appreciate how this amendment will abbreviate the opposition process - unless it is intended as the first step toward the amendment of subsection 38(7) of the Trade-Marks Act in order to eliminate opposition hearings.
If the Board wishes to streamline oppositions, it should begin by improving its administrative handling of opposition files, make rulings more expeditiously and decrease the lengthy delays between the written argument and the oral hearing stages.
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| Gary Partington |
Marks & Clerk Canada
PO Box 957, Station B
Ottawa ON K1P 1C2
Canada
Tel: +1 613 236 9561
Fax: +1 613 230 8821
info@marks-clerk.ca
www.marks-clerk.ca