As a result of recent positive experience with hearings by videoconference, the Canadian Intellectual Property Office has announced that the default mode for all hearings before the Trademarks Opposition Board will be videoconferencing.

Hearings by Videoconference

In Canada, the Trademarks Opposition Board (“TMOB”) hears trademark application opposition proceedings as well as summary proceedings to expunge registrations for non-use of the trademark pursuant to Section 45 of the Trademarks Act

The Canadian Intellectual Property Office (“CIPO”) has announced that all hearings before the TMOB will now be scheduled via videoconference “by default”.  The TMOB will consider scheduling hearings by teleconference when specifically requested.  The TMOB has advised that it is “not expecting to resume in-person hearings in the near future”.  It is unclear whether hearings by videoconference will remain the “default” if in-person hearings resume.

The TMOB has also issued guidance on practices to help the parties improve the conduct of virtual hearings, including providing a list of case law to the Registrar electronically, and filing a compendium (condensed book) of key documents in an organized and easy to consult format.

Best Practices for Virtual Cross-examinations

In general, the TMOB does not specify how cross-examinations in opposition proceedings should be conducted, and it is only in situations where an agreement cannot be reached by the parties that the TMOB will intervene and set the terms of the cross-examination.

Since the commencement of the Covid-19 pandemic, cross-examinations have routinely been conducted virtually by video conference.  The TMOB is encouraging parties to improve the virtual cross-examination experience, and has suggested that the parties have advance discussions on the protocols that will govern the conduct of the cross-examination.

Concluding Comments

While the Covid-19 pandemic forced Canadian courts and tribunals to use videoconferences as an alternative to in-person hearings and cross-examinations, many are realizing that in most cases these “virtual” platforms can be used at least as effectively as in-person appearances.  It will be interesting to see to what extent Canadian courts and tribunals revert back to in-person hearings once permitted.    

Originally Published by Stikeman Elliott, March 2021

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.