Canada’s Trademarks Opposition Board (TMOB) has announced changes compressing the schedule in trademark opposition and non-use cancellation proceedings. The changes come into effect on December 1, 2023 and are intended to promote more timely and efficient proceedings.
Changes to Opposition Proceedings
The TMOB changes to opposition practice are intended to improve the timely and efficient disposition of matters and support the TMOB to provide timely hearing dates and decisions.
The changes reduce the available benchmark extensions of time for the following stages of an opposition proceeding:
Benchmark Extension | ||
Stages of Proceeding | Current Version | Amendment |
Statement of opposition | 4 months | 2 months |
Counter statement | 2 months | 1 month |
Opponent’s evidence | Up to 3 months with party consent | Up to 2 months with party consent |
Applicant’s evidence | Up to 3 months with party consent | Up to 2 months with party consent |
Reply evidence | Up to 4 months with party consent | Up to 1 month with party consent |
Opponent’s written representations | Up to 2 months with party consent | Up to 1 month with party consent |
Applicant’s written representations | Up to 2 months with party consent | Up to 1 month with party consent |
The changes:
- increase the penalty if an opponent fails to complete a cross-examination by the deadline set after obtaining an extension of time to submit and serve its reply evidence. The opponent’s extended deadline will be reduced to one month from the earlier of (a) the previous cross-examination deadline, and (b) the date on which the opponent informs the Registrar that it will not proceed with the cross-examination.
- reduce the one-time “cooling-off” extension available for each party from 9 months to 7 months.
- introduce a new “acting diligently” section – a party may be granted an extension of time where the party is able to demonstrate a consistent overall pattern of reasonable effort, promptness and diligence in their efforts to meet an upcoming deadline. Such a request must explain why it is not be possible to meet the upcoming deadline and set out the actions taken prior to the upcoming deadline to meet it.
Changes to Non-Use Cancellation Proceedings
Section 45 of the Trademarks Act provides a summary proceeding to expunge a registered trademark for non-use at the Registrar’s own initiative or on request of a third party.
The changes to these proceedings reduce the time a trademark owner has to demonstrate use (or provide acceptable reasons for non-use) from a benchmark of 4 months to a maximum of 2 months.
Requests for extensions of time based on exceptional circumstances are permitted. Such requests must specify the length of the extension sought and provide details of the timeline and steps planned to meet the proposed extended deadline. Examples of exceptional circumstances continue to include events such as a recent change in agent, assignment, and circumstances beyond the trademark owner’s control. The Registrar has the discretion to decide the length of the extended period and on terms it considers appropriate.
The new “acting diligently” section also applies to non-use cancellation proceedings.
Importantly, the changes specify that delay due to ongoing settlement negotiations will not assist the party in showing that they acted diligently.