The Canadian Trade-marks Opposition Board recently published a new Practice Notice which introduces a number of considerable changes to opposition practice and comes into force on March 31, 2009.
These changes are designed to: (a) speed up the opposition process by reducing and in some cases (where the consent of the other party is required but not provided) eliminating the availability of extensions of time; (b) introduce the concept of a "cooling-off" period to help facilitate settlement negotiations between the parties; and (c) streamline the hearing process.
- Extensions of Time
Apart from the availability of "cooling-off periods" (described below) and other exceptions identified in the Notice, the new general rule is that only one request for an extension of time up to the maximum defined benchmark will be granted to comply with the requirements of each stage of the opposition proceeding. Parties will therefore be given the incentive to request the maximum benchmark each time they request an extension.
The Notice provides examples of specific exceptional circumstances which may result in additional extensions of time beyond the maximum benchmarks, in particular, the existence of co-pending opposition proceedings (to synchronize deadlines), recent changes of instructing principal/agent, circumstances beyond the control of the person concerned, including illness, accident, death or bankruptcy, assignment of the trademark, the filing of a revised application that would put an end to the opposition proceeding, and efforts to finalize settlement (a one time three-month maximum on consent).
Requests to extend deadlines (except those to file the Statement of Opposition and Counter Statement) will not be granted without the consent of the other party. In some cases (where consent is not provided) this may result in a party being required to file its evidence and/or written argument within a one-month period.
- "Cooling-off Period" Extensions
The Registrar will generally grant each party one "cooling-off period" extension of time up to a maximum benchmark of nine months, with the consent of the other party, to allow the parties to pursue settlement negotiations and/or mediation of the opposition (together these extensions could potentially amount to an 18-month cooling-off period). A cooling-off period can be requested by the opponent before the filing of either its Statement of Opposition or its evidence and by the applicant before the filing of either its Counter Statement or its evidence. The grant of a cooling-off period prior to an eligible deadline does not preclude an applicant or opponent from also obtaining one maximum benchmark extension of time prior to that eligible deadline (either before or after the cooling-off period), assuming it would otherwise be entitled to such extension.
New procedures have been introduced to streamline the hearing process. The parties will now have an opportunity to mutually request that their case be heard on short notice. The Notice provides that it will not be possible to reschedule a hearing more than once nor will it be possible to postpone a hearing. Decisions will be rendered even if the parties have cancelled the hearing.
Overall, with the exception of the availability of cooling-off periods for settlement purposes, opposition proceedings can be expected to move at a much faster pace in Canada after March 31, 2009, and all parties will have to be prepared to respect the new deadlines, failing which their positions may be seriously compromised.
For the full text of the new Opposition Board Practice Notice see: