Effective March 31, 2009, the Canadian Intellectual Property Office will implement a new opposition practice, introducing several important changes to Canadian opposition proceedings. The most important are:
- "Cooling off" periods to encourage settlement. Each party may make one request to extend deadlines in an opposition proceeding to pursue settlement. These extensions require consent of the other party, and can be requested before filing the pleadings or evidence.
- New benchmarks for other extensions are set, with stern guidelines that additional extensions will only be permitted if there are exceptional circumstances.
- Guidance is provided regarding what constitutes "exceptional circumstances." Examples include:
- Co-pending opposition proceedings;
- Recent change in a party's instructing principal or trade mark agent; Circumstances beyond the control of the person concerned, e.g. illness, accident, death, bankruptcy;
- Recent assignment of the trade mark that is either the subject of the opposition or a trade mark application or registration being relied upon by the opponent;
- A pending request to revise a trade mark application, where the acceptance of the revised application would end the opposition or substantially change the nature of the opposition proceedings;
- Finalizing settlement: one further extension of time of up to 3 months on consent to fully finalize and complete settlement negotiations or mediation. Only one party can make this request.
- Changes to the scheduling of oral hearings. The Registrar will not permit postponement of a hearing on the basis of consent between the parties and/or on the basis of settlement negotiations. If the parties agree that they no longer wish to be heard, after the opposition has already been scheduled to be heard, the Registrar will proceed, in due course, to issue a final decision, unless the opposition or application is specifically withdrawn.
The new practice applies to all oppositions. Certain initial deadlines are set by the Regulations (eg. to file counterstatements and evidence), and there continue to be differences in these deadlines for trade marks advertised pre and post October 1, 2007.