Changes Announced to Canadian Trademark Opposition Process
A Practice Notice , entitled, "Practice in Trade-mark Opposition Proceedings" has recently been issued by the Canadian Trade-marks Opposition Board to introduce procedural changes and guidance concerning the granting of extensions of time.
Effective March 31, 2009, the Practice Notice* will replace the October 1, 2007 Practice Notice entitled "Procedure before the Trade-marks Opposition board as of October 1, 2007" and is intended to:
- Simplify and clarify the Registrar's benchmarks for granting extensions of time including guidance with respect to qualifying "exceptional circumstances" for the purposes of obtaining an extension of time;
- Encourage the parties to pursue settlement and mediation early in the opposition proceeding including the introduction of "Cooling Off Periods" whereby either party may request an extension of time of no more than nine (9) months on consent for the purpose(s) of negotiating settlement , mediation, and/or co-existence between the parties; and
- Introduce a new practice with respect to the scheduling of hearings.
The introduction of these changes has resulted from consultation among the Trademarks Office, applicants and practitioners and, as a result, is expected to better accommodate time line and other requirements for the parties involved in opposition while providing greater certainty for those seeking to extend opposition deadlines.
*Notably, trademark applications advertised prior to October 1, 2007 will remain subject to the Trade-marks Regulations as they read as of September 30, 2007.
