Objection proceeding

In Canadian trademark law, an objection proceeding is an administrative process that allows any interested party to prevent a geographical indication from receiving protection.[1][2] Geographical indications reviewed and recommended by the Canadian Intellectual Property Office (CIPO) and published in the Trademarks Journal can be disputed through this process.[1][3]

Not to be confused with Opposition proceeding (Canada), an administrative process to stop a trademark from being registered in Canada, or more generally, Opposition proceedings in other countries.

Similar to oppositions, an objection must be based on at least one of the grounds set out in the Trademarks Act, and it must be filed during the two-month period after the geographical indication first appeared in the Trademarks Journal.[1][2] Objections are also heard and decided by the Trademarks Opposition Board, an administrative body within CIPO.[4][5]

The Trademarks Act and Trademarks Regulations govern objection proceedings in Canada.[2][6] The legislation identifies the two parties in objection proceedings—the responsible authority and the objector.[2] The responsible authority is the entity (e.g., individual, company, country) that requests protection for a geographical indication, and they must have an adequate interest and connection with the geographical indication in order to make a request.[1][7] Protection can only be sought for geographical indications related to wine, spirits, agricultural products, and food.[1][7] Meanwhile, the objector is any interested party that may be impacted by a decision to protect the geographical indication in question.[2][8]

In addition, the Trademarks Act sets out the permissible grounds for objection, procedural rules and protections, service requirements, and the timeframe and content requirements for pleadings filed by the responsible authority and objector.[2] The Trademarks Regulations furnish additional information about timeframes and requirements for correspondence, documents, service, evidence, statements, cross-examination, written representations, hearings, and the payment of fees.[6]

Grounds for objection

The Trademarks Act provides seven available grounds upon which an objection can be based.[2] An objector can assert that, when the geographical indication was published in the Trademarks Journal, it was not actually a geographical indication, it was the same as a popular name for the product in a language that was popular in Canada, and/or it was not protected in the product's home country (unless that country is Canada).[2] Specifically in relation to a geographical indication for an agricultural product or food, an objector can claim that it was confusing with a trademark that was registered, pending, or previously used in Canada and not yet abandoned at the time that the geographical indication was published in the Trademarks Journal.[2]

An objection can also be raised about a translation of a geographical indication.[2] An objector can assert that, when the translation was published in the Trademarks Journal, it was not an accurate translation of the geographical indication, and/or it was confusing with a trademark that was registered, pending, or previously used in Canada and not yet abandoned.[2] Specifically in relation to a translation for an agricultural product or food, an objector can claim that it was the same as a popular name for the product in a language that was popular in Canada at the time that the geographical indication was published in the Trademarks Journal.[2]

Procedure

Before a geographical indication is published in the Trademarks Journal, the responsible authority submits a request to protect the geographical indication and the request is reviewed by CIPO.[1] If the geographical indication satisfies the requirements set out in the Trademarks Act, a recommendation is made to the Minister of Innovation, Science and Industry to publish the geographical indication in the Trademarks Journal.[1] Any interested party has two months from the date that the geographical indication first appeared in the Journal to initiate objection proceedings.[1][2] These proceedings usually involve pleadings, evidence and arguments.[2][6] All documents must be properly served in the manner and timeframes set out in the Trademarks Act and Trademarks Regulations.[2][6]

Pleadings

Proceedings begin when an interested party files a statement of objection against a geographical indication in order to prevent it from receiving protection.[1][2] The interested party must file an objection during the two-month period after the publication of the geographical indication in the Trademarks Journal, unless a request is made and accepted for a time extension.[1][2][5] The statement of objection is required to specify at least one of the grounds set out in the Trademarks Act.[2]

In response, the responsible authority must file a counter statement which indicates that they will be contesting the objection.[2] The responsible authority can also request an interlocutory ruling to dismiss the objection (in whole or in part), but this can only be done before a counter statement is filed.[2][5] If the responsible authority does not take any action, the geographical indication will not receive protection unless a request is made and accepted for a time extension.[2][5]

Evidence

Both the interested party (objector) and the responsible authority are required to submit evidence.[2] The objector and responsible authority can also file a statement that they will not be submitting any evidence.[2][6][9] If the responsible authority does not take any action at all (either filing evidence or submitting a statement), the geographical indication will not receive protection; likewise, if the objector does not take any action at all (either filing evidence or submitting a statement), the objection will be deemed withdrawn.[2]

After both the objector and responsible authority file their evidence, the objector is allowed to respond with additional evidence.[9] Both the responsible authority and objector are also permitted to request cross-examination of the other party's evidence and witnesses.[9]

Arguments

Both the objector and responsible authority can submit written arguments and/or request to provide oral arguments at a hearing.[2][9] The objector and responsible authority can also file a statement that they will not be making any arguments.[9]

Decision and appeal

Once the proceeding is complete, the Trademarks Opposition Board (TMOB, acting on behalf of the Registrar of Trademarks) makes a decision and provides written reasons.[2][5] The Board can either accept or reject the objection (completely or partially).[2] Decisions of the TMOB can be appealed to the Federal Court of Canada.[1][5][10]

See also

References
  1. "Process to Request that a Geographical Indication be Entered on Canada's List of Geographical Indications—Canadian Intellectual Property Office". Government of Canada. 2020-06-30.
  2. "Trademarks Act—Statement of objection". Government of Canada. 2020-08-06.
  3. "Trade-marks Journal". Government of Canada. 2016-09-01.
  4. "Member of the Trademarks Opposition Board". Government of Canada. 2020-07-07.
  5. "Practice in Objection Proceedings under Section 11.13 of the Trademarks Act—Canadian Intellectual Property Office". Government of Canada. 2019-06-19.
  6. "Trademarks Regulations—Part 1: Rules of General Application (continued)—Objection Proceeding Under Section 11.13 of Act". Government of Canada. 2020-08-06.
  7. "Trademarks Act—Geographical Indications". Government of Canada. 2020-08-06.
  8. "Trademarks Act—Definitions". Government of Canada. 2020-08-06.
  9. "Trademarks Regulations—Part 1: Rules of General Application (continued)—Objection Proceeding Under Section 11.13 of Act (continued)". Government of Canada. 2020-08-06.
  10. "Trademarks Act—List". Government of Canada. 2020-08-06.
This article is issued from Wikipedia. The text is licensed under Creative Commons - Attribution - Sharealike. Additional terms may apply for the media files.