Amendments to Canadian Trade-Marks Regulations

The Canadian Trade-marks Regulations have been amended. Beginning on June 2, 2007, parties to opposition proceedings can use couriers as a means of service. In the past, courier services were only acceptable if the other party consented. Otherwise, they had to generally resort to service by registered mail. The new amendments now set out four acceptable ways of service. They include registered mail, personal service, courier or any other means as agreed by the parties. There is no longer a requirement to pay a government fee to record certain amendments against applications or registrations, such as changes in name or address. The Trade-marks Office will still charge a fee for other recordals, such as assignments. This amendment in the Regulations should ultimately translate into savings for clients, particularly those with significant trade-mark portfolios. Certain time limits in opposition proceedings have also been changed. However, the Trade-marks Office has delayed implementing these changes until October 1, 2007. After a trade-mark application is published in the Trade-marks Journal, third parties can oppose it by filing a statement of opposition. Once a statement of opposition is filed, the next step is for the applicant to file its counterstatement. Under the new Regulations, the time period for filing the counterstatement will be extended from one to two months. After the counterstatement has been filed, the opponent and the applicant have to sequentially file their evidence. Under the new Regulations, the time period for doing so will be extended from one month to four months. According to the Trade-marks Office, these new amendments should reduce the need for extensions of time by giving parties more time during the opposition to prepare and file their documents. The Trade-marks Office plans to issue new practice guidelines reducing the time and the number of extensions granted during oppositions. For a copy of the new amendments, see: http://canadagazette.gc.ca/partII/2007/20070516/html/index-e.html Summary by: Hung Nguyen