Archive for May, 2012

Trade-Mark Opposition Board Hearings

Tuesday, May 15th, 2012

While this post has nothing to do with small business law per se, I thought that I would put up this post because, to be honest, I had a real bugger of a time trying to find any information out regarding hearings before the Trade-Mark Opposition Board and there wasn’t a lot of procedural information out there.  I was surprised that there wasn’t much in either Odutola on Canadian Trade-Mark Practice or Hughes on Trade-Marks in this regard.  I made inquiries of numerous colleagues for whom they all had had the same experience as myself – they have done trade-mark oppositions but the determination was always on the basis of written arguments and nobody had attended an oral hearing.  Then I spoke with my good friend Aaron Schwartz who had done them in the past and his advice to me was “they’re just like arguing an appeal, don’t worry you’ll be fine.”  That made me feel better in the sense that at least I was sure that I wouldn’t be involved in something completely foreign to my sense of understanding.  And so yesterday I caught a plane and attended my first oral hearing on a trade-mark opposition.

I did manage to find one continuing legal education program in which oral hearings were quickly mentioned.  Unfortunately, I only copied the two pages that covered the section – if anyone ever happens upon this program again and wants to let me know who said these passages I’ll happily give credit to the author where it is due.  It was written:

Hearings are held in Hull, Quebec before a one-person board.  Note also that is is possible to participate in hearings by way of telephone conference call. … French language hearings along with simultaneous language translation facilties are available.  …  There is currently a backlog of approximately 190 cass for which hearings have been requested and are scheduled or await scheduling, or for which decisions are pending.  The actual hearing date that is granted is typically anywhere from nine months to one year from teh date the request is made.  Decisions typically issue within one month of a hearing.

One can expect a high level of adjudication in oppositions, indeed often better than other venues.  … With this in mind, it is advisable not to waste the Board’s time by restating the obvious, belabouring issues of law which have long been decided, or droning on about basic points which are raised in every hearing in which an Officer participates.  The experienced practitioner quickly and succinctly canvasses issues such as the onus on the parties, and the material dates for considering the various grounds of opposition.  Keep in mind that each Hearing Officer has the pleasure of listening to a trade-mark agent or lawyer remind him or her on an almost weekly basis that the onus on the parties has not changed since the week before.

Nor does it advance a party’s case to reread its written argument.  The better approach is to simply inquire of the Board whether they have had an opportunity to read the party’s written argument and might have any qustions regarding same.  The one should go on to either add points not included in one’s own written argument or to add commentary on the other side’s case.  Do not be afraid to try out new points of law, even if prior Opposition Board decisions are against you.  The Board will at least consider and rule on them in writing, which may provide an opportunity to pursue the argument on appeal, if the case goes that far.

From my experience yesterday, I can add the following updates or my comments.  Firstly, Hull, Quebec is now known as Gatineau, Quebec (which threw me off a little and shows my age I suppose).  Second, as it now stands, the Board is finishing off its new swanky hearing room (we used it but it’s not done) and in a few months it will be ready for use with video conferencing which will be better than hearings by way of conference call.  Third, yes, English-French translation service is available, but one has to be somewhat wary of it.  The translators that they had for my hearing were good but they were not legally trained.  To give an example, the moving party or the applicant in a legal proceeding is a “Requerant”  The literal, non-legal translation would be “the requirer” or “the requiring party”.  In this case, however, the translator should have said “the applicant” but I was given the translation of “the requirer” and it took me a few seconds to figure out that it should have been the applicant – which meant that I lost a few seconds worth of translation.  After about the half-way point, I started to wear my headphones half on my ear and was listening more to the French than to the translation (I really should have more faith in my French abilities).

I’m not sure how many cases are backlogged now, but I can say that between the time the other side requested the oral hearing and yesterday was slightly more than one year.  In this instance, I cannot stress enough how important it was that I had the research updated between the time of the written arguments and yesterday’s hearing.  Why?  Because as it turned out the Supreme Court of Canada had released its decision in Masterpiece Inc. about five months after our written arguments had been submitted and that case changed the way one approaches trade-mark oppositions now.  As the Board member put it yesterday, she viewed Masterpiece Inc. as “Trade-Mark Oppositions 101″ – so that should be your starting point for the next few years at least – and I would have been very sorry if the research wasn’t updated and that case wasn’t found and addressed.

In addition, the Board member indicated that the Board’s internal guideline now is to get decisions released within four months – and that’s just the guideline so it could conceivably be a little longer.

I’m personally not a fan of assuming that the Board has read all of my arguments and I’m not a proponent of the “just ask them if there are any questions” approach.  I decided to hit the highlights at least of each of my arguments and still make the additional points or comments on the other side’s written argument.

In terms of logistics, the Oppositions Board hearing room has now moved to Room C232 of Phase II of Place du Portage.  Place du Portage runs from rue Victoria on one side to rue de l’Hôtel de Ville on the other side.  Phase II is on the Hôtel de Ville side – so if you have lots of materials to haul with you, have the taxi go to the Hotel de Ville side rather than the rue Victoria side.  Once you get into Phase II at the Hôtel de Ville side, go up the escalator and you will see Room C232 at the top of the escalator – so you don’t have to go through the security checkpoint.

I should also mention that it was stated by the Board Member that the Board does also hold hearings in Montreal – but only where both the applicant and the opponent are represented by lawyers or trade-mark agents based in Montreal.

There is a Practice Notice that is in effect for trade-mark opposition proceedings.  Suprisingly, it also says little about the actual procedure at the oral hearing.  The only portion that deals with the requirements for the hearing itself is found at Section X.8 and that simply says that parties are required to send to each other and to the Board at least five working days before the hearing a list of the case law and copies of any unreported decisions that they intend to rely upon at the hearing.  In this instance, I focused on the wording “to be relied upon at the hearing”.  I had cited about 20 cases, but I only planned to address about 6 of them in my oral arguments – the other 14 or so were either additional examples of my main case citations or else they dealt with items like on whom a certain onus rested.  So, I put in my 6 cases on the list and left it at that.  The other side, however, had cited over 30 cases and their lawyer sent in a list that had all of their cases listed.  The Board member said absolutely nothing about this – even though only a handful of cases were cited by the other lawyer.  I’m not complaining about this and it really didn’t matter in the end.  Next time, though, I will simply send in a list of all of my cases cited in the written arguments and any new cases that came up in between the written arguments and the hearing and then I can refer to whatever ones I want.

What was not clear was who speaks and when.  The onus is on the applicant to satisfy the Board that there is no likelihood of confusion.  As such, I presumed that I would go first, then the other lawyer and I would get a chance of reply.  As it turned out, the order of speaking was the Opponent’s lawyer first, then myself for the applicant, and then the Opponent got a chance of reply.  I was fine with either order, but at least now I know who speaks when.

When I was first married I had problems dealing with how to address my mother-in-law.  I was brought up not to call my elders by their first name.  I wasn’t going to call her “Mom” because she isn’t my mother.  I wasn’t going to call her “mother-in-law” because that sounded too formal and inappropriate.  I honestly had no idea what to call her so for over a year I simply spoke with her directly and never called her anything.  The “difficulty” (to the extent that there was one) was alleviated after a year with the birth of our first child and my ability to now call her “Grandma”.  Fortunately, though, that year gave me practice for speaking with the Board Member.  I couldn’t call her Your Honour, because she isn’t a judge.  I just couldn’t bring myself to referring to a woman (or a man for that matter) as a “member” – for reasons which should be obvious.  I did not feel comfortable referring to her by her personal name since I had never met her before and it seemed awfully familiar (although, in fairness, it wasn’t a stuffy or overly formalistic hearing).  So, I just spoke directly with the Board Member and didn’t address her directly but I did make mention from time to time along the lines of “if the Board should find …”  I had asked the registrar before the hearing how to address the Board Member and he had no idea.  I guess you’ll have to figure out what works for you and you are comfortable with.  I would still be calling judges “Mi’Lord” and “Mi’Lady” if we weren’t required to call them “Your Honour” nowadays – I like the old formalities.

In terms of the hearing itself, the Board Member basically said at the outset that she had a few questions she wanted to ask of each side and that some other questions might arise as we made our arguments, but that she was basically willing to let us make our arguments with little interference from her.  The hearing did proceed in that manner.  Compared to other hearings I’ve been in, it was quite painless.

The final issue to mention is that there are no costs provisions under the Trade-Mark Act or the regulations or the practice notice for opposition board hearings.  So, my last minute panic (that I always get before a hearing, motion, etc.) that I have forgotten to prepare a bill of costs or costs outline was quickly relieved when I ran into the office late the night before and saw in Hughes on Trade-Marks that there are no costs provisions so I didn’t have to prepare anything related to costs.  At least one less thing to worry about from a practice standpoint (although if my client wins the hearing I’m sure it would like its costs – but the same could be said for the other side if it wins).

Hopefully some of the above information might be useful to someone else facing their first opposition board hearing and looking for some practical tips on how it works.  Best of luck in your hearing!