WWW.LEXPERT.CA
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2016
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LEXPERT 23
Jolliffe, R. Scott Gowling WLG
(416) 862-5400 scott.jolliffe@gowlingwlg.com
Mr. Jolliffe is one of Canada's pre-eminent trial and appellate lawyers in the
intellectual property field. His areas of specialization include patent, trade-
mark, copyright and trade secret litigation.
Jilesen, Monique Lenczner Slaght Royce Smith Griffin LLP
(416) 865-2926 mjilesen@litigate.com
Ms. Jilesen's commercial litigation trial practice includes complex contract
and shareholder disputes, class actions, civil fraud, bankruptcy and insol-
vency matters, securities and derivatives cases, and professional liability.
Jensen, QC, FCIArb, Carsten Jensen Shawa Solomon
Duguid Hawkes LLP (403) 571-1526 jensenc@jssbarristers.ca
Mr. Jensen is a founding partner of JSS Barristers, and a past President of the
Law Society of Alberta. His practice focuses exclusively on civil litigation and
dispute resolution, with an emphasis on corporate and commercial litigation
including commercial class actions (both plaintiff and defence), oil and gas
disputes, shareholder disputes, multi-party litigation and arbitrations.
Jamal, Mahmud Osler, Hoskin & Harcourt LLP
(416) 862-6764 mjamal@osler.com
Mr. Jamal's practice includes class actions, banking litigation, constitutional
and administrative law, Aboriginal litigation, competition/antitrust, pension,
tax, copyright and regulatory litigation before trial and appeal courts
across Canada.
Hutton, Susan M. Stikeman Elliott LLP
(613) 566-0530 shutton@stikeman.com
Ms. Hutton's practice focuses primarily on competition, foreign investment
and international trade. She has provided Competition Act and Investment
Canada Act advice in respect of complex M&A, and has acted on several
dumping and subsidy inquiries. Ms. Hutton is a member of the Competition
Policy Council of the CD Howe Institute, and is past-Chair of the Competition
Law Section of the CBA.
Hunter, QC, Lawson A.W. Stikeman Elliott LLP
(613) 566-0527 lhunter@stikeman.com
Mr. Hunter is one of Canada's renowned regulatory and government relations
counsel. He was formerly Canada's senior civil servant in charge of competi-
tion policy, primarily responsible for drafting the federal Competition Act. He
was head of the firm's Competition and Foreign Investment Group from 1993
to 2003, and has served as executive VP and chief corporate officer of Bell
Canada and BCE Inc.
LEXPERT-RANKED LAWYERS
plications for trademark registrations. In addi-
tion to these so-called "opposition proceedings,"
it also conducts proceedings under s. 45 of the
Trademarks Act, which allows for a third party
to seek to have a trademark expunged three years
following registration, if the owner cannot prove
its use in the marketplace.
"Section 45 procedure hasn't changed in any
significant way over the years," says Steven Gar-
land, a partner at Smart & Biggar/Fetherston-
haugh in Ottawa. "It's a very summary-type pro-
cedure." e registrant must submit an affidavit
demonstrating use or explain any special circum-
stances justifying lack of use. e third-party
challenger does not submit evidence. Both par-
ties exchange written arguments, but there are no
cross-examinations.
Opposition proceedings, however, are much
more complex. Both the applicant and the oppo-
nent can each submit evidence. ere are oppor-
tunities for cross-examinations and written argu-
ments. ere are also extensions of time that can
be obtained for each of these steps. "e Board
has tried to make the trademark opposition pro-
cess more streamlined," says Garland. "ere are
fewer opportunities to gain extensions in the
various steps, but it still takes two to three years
from the time an opposition is started to having
an actual decision rendered."
In tandem with Bill C-31 amendments to
the Trademarks Act, the Trademarks Opposi-
tion Board is considering further changes to the
trademarks opposition process by 2018 to short-
en or remove some of the delays.
Under the proposed new rules, cross-exami-
nations would occur aer the submission of all
of the evidence (as in court proceedings). Now,
when the opponent submits its evidence, there is
an opportunity for cross-examination. en the
applicant submits its evidence, followed by an op-
portunity for cross-examination. And then there
is reply. Under the new format, says Garland,
"all the cross-examinations would be done at the
same time, once all of the evidence is in. at
would lead to a reduction in delays."
e TMOB is also weighing the exchange of
written arguments in sequence. "Right now," says
Garland, "they're exchanged at the same time,
and as a result, sometimes you don't see the crys-
tallization of the issues as you would in a court
proceeding. at sequential process wouldn't
save any time, but it would make it easier for the
parties and the Opposition Board to understand
the critical issues at play."
