Interlocutory review of opposition pleadings now possible

The Canadian Intellectual Property Office (CIPO) has recently issued a practice notice reversing a long-standing policy not to review the sufficiency of pleadings in a trademark opposition at an interlocutory stage. Under the previous system, parties to a trademark opposition proceeding who wished to raise an issue as to the sufficiency of the statement of opposition could only do so as part of their written argument.

In fact, until recently, the practice of the CIPO Trademarks Opposition Board was to advise parties that it could not rule on pleadings issues until all the evidence and written arguments had been filed. This meant that parties could be forced to proceed without knowing the case to be met because of ambiguity or insufficiency in the pleading. The Opposition Board would rule on the sufficiency of the pleading only as part of its final decision.

This practice was criticized by, among others, the Federal Court of Appeal, (in its 2002 decision of Novopharm Limited v AstraZeneca AB), which felt that the sufficiency of pleadings should be determined on an interlocutory basis. In response, the CIPO has now issued a practice notice providing for interlocutory rulings to determine the sufficiency of pleadings in an opposition proceeding.

As a result of the new practice, an applicant may now challenge a statement of opposition prior to filing and serving its counter statement by requesting an interlocutory ruling to strike out all or any portion of the opponent's pleadings. The responsibility of the Opposition Board pursuant to the Trademarks Act is only to determine if the opposition raises one substantial issue for decision and is not to ensure that all grounds are properly pleaded.

Accordingly, in theory, an opponent need only properly plead one ground of opposition for the statement of opposition to withstand attack, regardless of whether any additional grounds relied upon are properly framed. However, it is the responsibility of the opponent to ensure that each of its grounds of opposition is properly pleaded. The failure to do so may result in a ground of opposition not being considered at the time the final decision is rendered.

Pursuant to the new practice, a request for an interlocutory ruling has no effect on any outstanding deadlines. If required, the applicant will be granted extensions of time of three months to file its counter-statement, upon request and payment of the corresponding official fee, until the interlocutory ruling has issued. The board will generally give the opponent the opportunity to reply to the objections raised by the applicant.

Further, in lieu of, or in addition to, filing a reply, an opponent may request leave to file an amended statement of opposition to respond to the applicant's objections. Accordingly, an opponent who comes to realize that its pleading is deficient may be able to amend its pleading and vitiate the risk that the board may strike out the pleading.

It should be noted that the ability to obtain a ruling on the sufficiency of a statement of opposition in an interlocutory manner does not survive the filing of a counter-statement. Once the proceedings have progressed to the evidence stage, issues concerning the sufficiency of pleadings will be considered at the decision stage. Accordingly, applicants should carefully review a statement of opposition to ensure that it is properly framed and decide whether an interlocutory challenge is warranted. Otherwise, an applicant will be faced with the situation where it must prepare evidence and written argument without a clear understanding of the case to be met.

Antonio Turco, Blake Cassels & Graydon LLP, Toronto