CANADA Law and Practice Contributed by: Casey Chisick, Steven Kennedy, Karen MacDonald, Jessica Zagar, Dian Howard and Steven Henderson, Cassels Brock & Blackwell LLP
See 5.6 Amendment in Revocation/Cancella- tion Proceedings for partial cancellation. 5.5 Legal Remedies Against the Decision of the Trade Mark Office A decision of the TMOB can be appealed by any party to the opposition. An appeal must be filed with the Federal Court within two months of the date on which the Registrar of Trademarks trans - mits the decision to the parties. Leave to appeal is not required. See 11.1 Appellate Procedure . 5.6 Amendment in Revocation/ Cancellation Proceedings Partial revocation or cancellation is available in Canada through Sections 45 and 57 proceed - ings. 5.7 Combining Revocation/Cancellation and Infringement A Section 57 expungement proceeding may be commenced as part of a counterclaim in an infringement action. In that case, the infringe - ment claim and the expungement counterclaim The Trademarks Act does not explicitly refer to fraud, although “bad faith” is both a ground for an opposition of a pending application and for an expungement of a registration. While this ground is only a few years old in Canada, an application that contains fraudulent information would likely constitute a “bad faith” application. An allegation of bad faith is resolved through an opposition proceeding (see 5. Trade Mark Procedure for Inter Partes Proceedings ). If the opposition is successful, the application will be refused; if not, it will be allowed to proceed to registration. will be heard and decided together. 5.8 Measures to Address Fraud
materials submitted in an opposition pro - ceeding became publicly available. • Argument – after all evidence has been filed and any cross-examinations have been com - pleted, the parties (first the opponent, and then the applicant) can submit written rep - resentations outlining their legal arguments regarding the opposition. The timing of each of the above steps is set by the Trademarks Regulations and practice notic - es issued by the Board. Many are extendible for prescribed periods and under specific circum - stances. However, as of April 1, 2025, parties will be able to request case management of pro - ceeding, allowing a Hearing Officer to deviate from the prescribed timelines in order to help streamline a proceeding in a more efficient man - ner. After these stages are complete, either party can request an optional oral hearing. An opposi - tion concludes with a written decision issued by the Trademarks Opposition Board (TMOB). Requests for Section 45 summary cancellation of a trade mark registration can be made by writ - ten request to CIPO. Additionally, an interested person can also apply to the Federal Court to expunge a registration. Effective April 1, 2025, a party to a proceeding before the Trademarks Opposition Board will be able to request that the Board order costs against the other party. Awards of this nature will be the exception rather than the rule and will only be available in cases where the other party’s conduct merits sanction in the form of an adverse costs award. Copyright The Registrar of Copyrights may correct clerical errors in a copyright registration. However, an application to expunge an entry from the regis - ter, or to correct an error or defect in the register, must be brought in the Federal Court.
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