Recent practice changes by the Canadian Trade-marks Office indicate that the Office intends to reduce the number of extensions of time it is willing to grant applicants and opponents.

Faster Opposition Practice

With respect to oppositions, in early September the Opposition Board announced a new comprehensive Practice Notice, which comes into effect October 1, 2007. The primary changes from existing practice relate to the time periods the Board will grant to complete each stage of opposition proceedings. On the one hand, amendments to the Trade-marks Regulations, also coming into force on October 1, 2007, have modestly increased the initial periods granted to file a counterstatement (from one month to two months) and to file evidence (from one month to four months); on the other hand, the Board has simultaneously announced a new practice regarding time extensions, which is clearly intended to restrict the number of extensions that will be granted to complete any one stage of proceedings. In particular, the Board has announced that, bearing in mind the rights of third parties, it will no longer grant repeated consensual extensions of time merely on the basis of a bare statement that the parties are engaged in settlement negotiations. Rather, after one consensual extension has been granted on this basis, the Board intends to make any further extension dependent on a showing of "exceptional circumstances," which could include ongoing settlement negotiations, provided the Board is convinced that the parties are actively and diligently pursuing those negotiations. Mere consent will no longer automatically result in repeated extension grants.

 It appears the effects of these changes will include the following:

a. - Parties will have to conduct settlement negotiations more briskly than has been common to date;

b. - Parties facing deadlines to file evidence will have to prepare evidence earlier and more quickly than has been common to date; and

c. - Parties facing evidence deadlines will likely wish to work on evidence preparation even while simultaneously pursuing settlement negotiations.

For the full text of the Opposition Board Practice Notice see:  http://strategis.ic.gc.ca/sc_mrksv/cipo/tm/tm_notice/tmn2007-10-01-e.html

Declarations of Use 

While the Office has not yet made a formal announcement, from September 2007 it has begun to curtail extensions granted to complete a proposed-use application by filing a declaration of use. To date, time periods granted for this purpose have fallen into three distinct phases:

  1. Phase One: The Notice of Allowance sets an initial declaration due date of no less than three years beyond the application's filing date.
  2. Phase Two: The Office has readily granted time extensions, for a total period of three years beyond the initial due date (in most cases, 6 years beyond the application's filing date).

Phase Three: For extensions requested beyond the two phases set out above, the Office has called for "significant and substantive" reasons to justify further extensions.In practice, it has often been possible to obtain several years worth of additional extensions.

Recent practice changes affect Phase Three. From September 2007 the Office has begun, for applications in Phase Three, to issue "final" extension grants, making it clear that any further extension is quite unlikely. It appears the Office intends to sharply curtail the granting of extensions in Phase Three.

One way that applicants can respond to this limitation on the number of extensions available, and obtain further time to commence use, is to file a fresh application once the original application has received three years of time extensions. Provided the second application does not encounter prosecution or opposition difficulties, it too would receive the initial period of three years, and then three years of extensions; in all, a total of 12 years between the two applications.

Examiner's Reports

To date, the Canadian Trade-marks Office has been quite liberal in granting time extensions to respond to Examiner's reports. While the Office has not yet made any official announcement in this regard, we will not be surprised if in the coming months the Office begins to implement parallel restrictions on the number of time extensions it is willing to grant to applicants to respond to Examiner's reports.