A recent blog noted that a failure to obtain a stay of a Federal Court judgment when an appeal to the Federal Court of Appeal is sought, means the Registrar of Trademarks will act in accordance with the Federal Court judgment, which may be contrary to what the appellant is seeking before the Court of Appeal.
A recent Practice Notice from the Trademarks Office clarifies the issue. Section 50 of the Federal Courts Act allows the Federal Court and the Federal Court of Appeal to stay proceedings. If there is an appeal from the Federal Court to the Federal Court of Appeal, the Registrar, absent a stay, must act in accordance with the judgment of the Federal Court.
There is, however, an exception in the case of opposition and section 45 procedings. If there is an appeal to the Federal Court of Appeal the Registrar will not treat the Federal Court decision as final because it must, pursuant to sections 39(1) and 45(5) of the Trade-marks Act, act in accordance with “the final judgment given in the appeal”.
Thus, where there is an appeal from the Federal Court to the Federal Court of Appeal, it is important to consider whether an opposition or section 45 proceeding is at issue, and if not, obtain the requisite stay.
The Practice Notice also provides guidance regarding the service of court documents on the Registrar.
Where a decision of the Registrar is appealed under section 56 of the Trade-marks Act or where judicial review of a Registrar’s decision is sought, the Registrar must be served personally. This is best effected by leaving the document with an employee of the Executive Office who is authorized to accept service.
All Notices of Appeal filed with the Federal Court must also be filed with the Registrar. These may be transmitted by any means, but failure to comply with sections 56(1), (2) and (3) of the Act, including the filing requirement, may render the appeal a nullity.