New Practice Notice on stays and service requirements

The registrar of trademarks has issued a Practice Notice which clarifies some of the issues involved in serving documents on the registrar and emphasizes the importance of keeping the registrar apprised of the conduct of litigation, including details of any subsequent appeals.

The guidance specifies that appeals and decisions of the registrar under Section 56 of the Trademarks Act - as for all other notices of application filed with the Federal Court - must be personally served. Personal service can be effected only by:

• attending at the Canadian Intellectual Property Office in person and leaving the document with an employee who is authorized to accept service; or
  
  
• filing the document, along with two copies, with the Federal Court Registry.

Mailing, sending by courier or faxing documents is not deemed to be personal service. Once documents have been served in the correct manner with the Federal Court, copies must also be filed with the registrar pursuant to Section 56(2) of the act. In Crush International Limited v Canada Dry Ltd ((1981) 1 FC 78), cited as an authority within the guidance, it was held that "failure to strictly follow the provisions [of Section 56] results in nullification". In Crush International, the deadline was missed due to an oversight by clerical staff in the solicitor's office. The court determined that although the remedy requested was a time extension under Section 56(3), which is not permissible, a better remedy (which the court found to be impliedly requested) was an extension of time for the appeal itself under Section 56(1), which was the correct procedure to achieve the same end.

The Practice Notice also deals with the importance of obtaining a stay of proceedings of the registrar from the Federal Court, in accordance with Section 50 of the Federal Court Act, pending the outcome of an appeal to the Federal Court of Appeal. In Ault Foods Ltd v Canada ((1992) 44 CPR (3d) 507), which is cited in the Practice Notice, a stay was granted on the condition that all reasonable steps be taken to expedite the hearing of the appeal. The stay was granted on the balance of convenience on the basis that there was a serious issue and that there could be irreparable harm. If the actions of the registrar are not stayed, the registrar must "act in accordance with all judgments and orders of the Federal Court", despite any subsequent appeals from the Federal Court to the Federal Court of Appeal. The only exceptions to this being subsequent appeals of decisions from the registrar in opposition and Section 45 proceedings.

Pursuant to Subsections 39(1) and 45(5) of the Trademarks Act, the registrar must defer to "the final judgment in the appeal" where:

• an application to the registrar for the registration of a trademark has not been opposed within the time limit; or
  
  
• such application has been opposed and decided in favour of the applicant.

The final judgment in decisions of the registrar under Subsections 38(8) and 45(4) of the act is taken to be that of the highest court to which the case is appealed. Thus, the decision of the Federal Court is taken to be final unless it is appealed to the Federal Court of Appeal, whose decision is in turn considered to be final unless the matter is referred to the Supreme Court of Canada.

Emma Day, Fasken Martineau, Vancouver