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 Welcome to the New
and Faster World of Trademark Oppositions in Canada!
Valerie Silva
Multiple extensions of time will be more
difficult to obtain in trademark opposition proceedings in
Canada, and as such, oppositions should move forward at an
unprecedented continuous pace.
Changes governing trademark opposition
proceedings in Canada came into force on October 1, 2007.
These amendments are applied differently based on
whether the advertisement date of the opposed TM application
falls before October 1, 2007 ("Column B Oppositions") or after
October 1, 2007 ("Column A Oppositions"). Statutory amendments include increasing the
amount of time for filing a Counter Statement from one month
to two months and for filing evidence from one month to four
months for Column A Oppositions.
However, the most significant amendments relate
to the ability of the Trademarks Opposition
Board to grant extensions of time at each stage of trademark
opposition proceedings. Specifically, amendments relating to
the granting of extensions of time include:
(i) limiting the number of extensions of time
granted at each stage in a trademark opposition;
(ii) requiring the existence of “exceptional
circumstances” to justify an extension of time in excess of
those permitted; and
(iii) refusing to grant extensions of time,
including those requested with the consent of the other party.
Limited Extensions of Time
Prior to the enactment of these amendments,
parties were permitted to request, and were consistently granted,
extensions of time as long as they had the other party’s
consent. As this practice allowed trademark opposition
proceedings to remain idle without progression, the “old”
practice of granting unlimited extensions of time has been
abolished and a new practice has been implemented to ensure
opposition proceedings actively continue through the process.
Based on the new practice, parties are now
limited in the number of extensions of time which can be
requested at each stage of a trademark opposition regardless
of consent.
For example, an Opponent is permitted to extend
the time for filing a Statement of Opposition, for a Column B
Opposition, as follows:
(i) one three-month extension of time with
sufficient reason(s);
(ii) one two-month extension of time with
sufficient reason(s) and the other party’s consent or if
exceptional circumstances are shown; and
(iii) one two-month extension of time with
sufficient reason(s) and the other party’s consent, or if
exceptional circumstances are shown.
For a Column A Opposition, an Opponent is only
permitted to extend the time for filing a Statement of
Opposition by requesting:
(i) a three-month extension of time with
sufficient reason(s); and
(ii) a two-month extension of time with
sufficient reason(s) and the other party’s consent or if
exceptional circumstances are shown.
Exceptional Circumstances
The definition of "exceptional circumstances"
under the new regime
has yet to be determined. The Board has advised that the
consent of the other party to the request for an extension of
time will generally not constitute exceptional circumstances
to justify a further extension of time.
While advised that “settlement negotiations”
may be sufficient to demonstrate exceptional circumstances,
the Board has also advised that this alone,
without any additional details about the negotiations, will
likely not justify a request for an extension of time based on
exceptional circumstances. The most concrete example provided
by the Opposition Board of exceptional circumstances would be
the case of settlement negotiations taking place on a global
level.
Refusal of Requests for Extensions of Time
Based on the new practice, the Opposition Board
is also able to refuse requests for extensions of time, which
are not permitted by the new practice, and/or for which it
believes the exceptional circumstances provided do not justify
the granting of the extension of time.
The Opposition Board is now advising parties
whether requests for extensions of time have been granted,
and under what circumstances subsequent extensions of time
will be granted.
The Opposition Board may advise the parties
with correspondence informing that:
(i) while the last extension of time is
granted, subsequent extensions of time will not be granted; or
(ii) the last extension of time is not granted
and a shorter extension of three weeks is granted in order to
comply with the outstanding requirement depending on the stage
of the trademark opposition.
One anomaly to the above is when an extension
of time to file evidence is not granted by the Opposition
Board. In such a situation, the Board informs the party that
the last extension of time is not granted and only grants the
party a shorter extension of three weeks to file a statement
that no evidence will be filed, in order to not be noted in
default. If the party wishes to file evidence, they would be
required to request a retroactive extension of time to do so,
and such a request would only be granted by the Opposition
Board in “appropriate circumstances”.
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