The Canadian Trade-marks Opposition Board (TMOB) has announced that as of March 31, 2009, it will be implementing new guidelines for practice in trademark opposition proceedings (the Practice Notice). The new Practice Notice introduces the availability of a nine-month cooling-off period to allow parties to pursue settlement or mediation, as well as changes to maximum benchmarks for extensions of time during the opposition process. The Practice Notice also allows parties to expedite the hearing of their case by requesting that it be scheduled and heard on short notice (approximately two days) in the event of a cancellation of a previously scheduled hearing.

New cooling-off period

Each party will be permitted to request the "cooling-off" extension only once during the opposition proceedings, and this opportunity is available only in the earliest stages of the opposition. The opponent will be allowed to request the cooling-off period prior to filing a statement of opposition, or prior to filing its evidence. The applicant will be permitted to request the cooling-off period prior to filing a counter-statement, or prior to filing its own evidence.

The Practice Notice states that, other than these two nine-month periods, no further extensions will be granted to allow the parties to discuss settlement. However, the Notice also provides that, as an "exceptional circumstance" one further three-month extension of time may be granted, on consent of both parties, to fully finalize and complete settlement negotiations or mediation. This last extension will only be granted once in the proceedings.

Changes to benchmarks for extensions of time

The Board will no longer consider multiple requests for extensions. At each stage of the proceedings, a party may make a single request for an extension of time, up to the maximum benchmark (not including a request for the cooling-off period). The new maximum benchmarks are as follows:

  • Extension to file a Statement of Opposition: 3 months (reduced from 5)
  • Extension to file a Counterstatement: 2 months (no change)
  • Extension to file evidence: 3 months (increased from 2), or 4 months from the completion of cross-examination, if cross-examination is requested
  • Extension to file Opponent's reply evidence: 4 months (reduced from 6)
  • Extension to file written arguments: 4 months (reduced from 8)

Specific examples of the types of exceptional circumstances that might justify additional extensions of time beyond the standard benchmarks are provided in the Practice Notice. These include: the need to synchronize deadlines for co-pending opposition proceedings; a change in trademark agent or lawyer; a recent assignment or revision of the trademark application at issue; illness, accident, death or bankruptcy. The Practice Notice also offers some examples of exceptional circumstances that could justify an extension of a deadline to conduct cross-examination, such as the need to wait for transcripts or responses to undertakings given in a cross-examination.