Canada: Trademarks Opposition Board Announces Upcoming Changes to Extensions of Time
On December 1, 2023, the Trademarks Opposition Board (TMOB) will be implementing changes to two of its practice notices: (1) Practice in trademark opposition proceedings; and (2) Practice in section 45 proceedings.
By shortening the timelines in trademark opposition and summary expungement proceedings, the changes are intended to promote timeliness and efficiency. In particular, the TMOB intends to reduce the current benchmarks for extensions of time and the cooling off period after the initial statutory extensions.
While already fixed deadlines and previously submitted extension requests will be unaffected, requests received on or after December 1 will be subject to the new schedules.
Changes to Opposition Proceedings
The amended timelines with respect to various stages of an opposition beyond the initial statutory deadlines are outlined below. Notably, the maximum amount of time permitted for “cooling off” (to allow for settlement discussions) will decrease from 9 months to 7 months.
- Statement of Opposition: extensions to file a statement of opposition will decrease from 4 months to 2 months.
- Counterstatement: the corresponding extension to file a counterstatement will be 1 month instead of 2 months.
- Filing Evidence with Other Party’s Consent: extensions of time to file primary evidence will drop from 3 months to 2 months.
- Reply Evidence: extensions of time for an applicant to file reply evidence will drop from 4 months to 1 month.
- Cross-Examination: the period to conduct a cross-examination will be 2 months instead of 4 months.
- Written Representations: opponents and applicants will only have an extension of 1 month (with the other party’s consent) to submit written representations as opposed to the previously allocated 2 months.
Changes to Summary Cancellation Proceedings
Under s. 45 of the Trademarks Act, a trademark registration may be expunged from the Register if the owner is unable to show use of the trademark in Canada during the three-year period preceding the s. 45 notice, and there are no special circumstances justifying the non-use.
The upcoming changes to s. 45 proceedings compress the time a registrant has to demonstrate use (or provide adequate reasons explaining the lack of use). Under the new practice notice, owners will only have a maximum of 2 months (in addition to the baseline 3-month deadline to file evidence) instead of the previously allotted 4-month benchmark.
Extraordinary Circumstances
For both opposition and s. 45 proceedings, the TMOB has also introduced an “acting diligently” requirement to obtain an extension based on “extraordinary circumstances”. The party must ultimately demonstrate a “consistent overall pattern of reasonable effort, promptness, and diligence” in their efforts to meet the upcoming deadline. Requests must explain why meeting the deadline is not possible and set out the actions taken prior to the deadline to meet it.
The following examples are recognized by the TMOB as exceptional circumstances: an inadvertent error or omission by a party or agent; inherently lengthy process of evidence preparation; and unavailability of relevant deponents due to involvement in other matters, if the party has exhausted all efforts to find alternative deponents. Importantly, delay resulting from ongoing settlement negotiations (e.g., due to negotiating terms or drafting agreements) will not assist the party in showing they acted diligently.
Looking Forward
The new changes mean that brand owners will have to act more promptly in all stages of opposition and cancellation proceedings. Those interested in preserving longer extensions of time should file such requests before the December 1, 2023 effective date.
For further information concerning the changes, please contact any member of our Intellectual Property Group.
The authors would like to thank Emily Groper, Articling Student-At-Law, for her assistance in writing this Update.