Trade marks

On October 1, 2007, the Canadian Trade-marks Office implemented changes to the procedures followed by the Trade-marks Opposition Board.

The primary impact of the procedural amendments to opposition practice relates to the time periods allowed for each step in the opposition process. Both new and ongoing oppositions are affected, with the date of advertisement (pre or post October 1, 2007) of the trade-mark application being the relevant date for determining the initial deadlines and allowable extensions throughout the proceeding. Oppositions to trade-mark applications advertised before October 1, 2007 follow one stream, while oppositions to trade-mark applications advertised after this date follow another stream. A number of the changes, however, are the same for both streams of oppositions.

The significant changes applicable to all trade-mark oppositions are as follows:

  • Requests for extensions of time must be accompanied by sufficient reasons to justify the extension.
  • A retroactive extension of time will not be granted if the proceeding has advanced to a subsequent stage.
  • If cross-examinations are requested and not completed within the fixed deadline, the 4-month extension of time to file evidence will automatically be reduced to 2 months. The Opposition Board will not send notice to this effect.
  • Extensions of time beyond the prescribed deadlines may be granted, but only if there are exceptional circumstances. Exceptional circumstances will be determined on a case by case basis. The consent of the opposing party by itself will not be sufficient to justify a request for an extension of time.

Important changes that are specific to oppositions to trade-mark applications filed after October 1, 2007 are as follows:

  • The length of time available to both the opponent and the applicant to file evidence, where settlement discussions are not ongoing, has been reduced.
  • It will not be possible to obtain an extension of time to request an oral hearing.

The most significant impact of the changes to Canadian opposition practice is in the length of time parties will have to prepare evidence or to negotiate a settlement of the opposition. The Trade-marks Office will no longer allow parties to extend the deadlines to file evidence indefinitely without showing progress in settlement discussions.