New Trade-Marks Opposition Procedures in Canada

On October 1, 2007, new Trade-marks Regulations came into effect in Canada, changing certain time limits in opposition proceedings. Under the new Regulations, applications which are advertised after October 1 will see the time period for filing the counterstatement increased from one to two months and for filing evidence from one to four months. Although the new Regulations may appear at first glance to give parties more time to complete certain tasks during the opposition, do not be fooled! In addition to the new Regulations, the Opposition Board (Board) has issued a new Practice Notice which dramatically affects how extensions of time will be granted during an opposition. The effect of this new Practice Notice may be an overall reduction in time limits during oppositions. For applications published after October 1, the Board will continue to grant first extensions of time without requiring the other party's consent, but only for certain stages of the opposition, such as filing a statement of opposition, counterstatement and written arguments. For other stages, including filing the Opponent's and Applicant's evidence, the Board will not grant any request for a first extension of time unless there is consent, exceptional circumstances exist or ongoing settlement discussions are in progress. This means that unless there are ongoing negotiations, parties should be prepared to file their evidence within the prescribed four months. Completing evidence can be an onerous task and this may prove to be a challenge for some under the new deadlines. Parties will need to identify their affiants early, so that information and materials can be gathered as soon as possible. In the past, it was possible for parties to be granted repeated extensions of time beyond their first extension, if they had the consent of the other party. This is no longer the case. For the most part, once the first or second extension of time has been granted, any request for a further extension of time will be denied unless "exceptional circumstances" can be shown. Consent of the other party alone is not an exceptional circumstance. Aside from that, there are no guidelines to determine what constitutes "exceptional circumstances". The Board will determine this on a case-by-case basis. Another important change under the new procedure relates to cross-examination. Generally, if a party requests cross-examination of an affiant and submits a request for an extension of time, the Board will issue an order giving that party four months to complete the cross-examination and then another four months to file its evidence. In the past, as a matter of practice, parties routinely requested orders for cross-examination so that they could obtain the extended four months to file their evidence. This practice has been curtailed under the new rules. If the requesting party fails to proceed with the cross-examination, the Board will automatically reduce its time limit for filing evidence from four months to two months. The goal is to discourage parties from using cross-examination merely as a tool to extend their time limits. This article has only touched upon some of the procedural changes affecting applications published after October 1. However, the new Practice Notice also affects how extensions of time are granted for applications published before October 1. Interested readers are encouraged to read the full Practice Notice. For a copy of the new Practice Notice, visit: http://strategis.gc.ca/sc_mrksv/cipo/tm/tm_notice/tmn2007-10-01-e.html Summary by: Hung Nguyen