Important changes to the Trade-marks Regulations (1996) have recently come into force, and will have a significant effect on opposition practice. The Regulatory Impact Analysis Statement in respect of these changes confirms that one of the goals of the changes is to streamline the trade-marks opposition process.
Generally, after approval of a trade-mark application, the Registrar of Trade-marks publishes the application in the Trade-marks Journal to provide public notice of the application. Barring successful opposition, the application will be allowed.
If a person or legal entity objects to the registration of the trade-mark application, the person or entity would file a Statement of Opposition with the Trade-marks Opposition Board (TMOB). Assuming that the Statement of Opposition is accurately pleaded, the TMOB will serve the Statement of Opposition on the applicant, and the opposition process begins. The applicant will then be allowed to respond with a counterstatement. After evidence has been exchanged, and cross-examination conducted (if requested), the parties may request that an oral hearing be held before the TMOB issues a final decision in the case.
The time limits originally specified under the Trade-marks Regulations (1996) for these various steps in the opposition process were fairly short. As a result, parties almost invariably requested extensions. Therefore, the amendments to the Trademarks Regulations have increased the time limit for filing a counter- statement from one month to two months. The opponent will then have four months after filing of the counterstatement to file its evidence, and the applicant will have a similar time period to prepare its own evidence. This is substantially shorter than the seven months that was routinely provided to each party to prepare their evidence under previous Canadian Intellectual Property Office (CIPO) practice.
Moreover, the TMOB has indicated that, as a result of the extension of the statutory periods for filing evidence, it will no longer automatically grant a sixmonth extension of those statutory terms.
In addition, changes to the Trade-marks Regulations in respect of fees for amending the Trade-marks Register are in effect. In essence, government filing fees for all amendments to the Register, other than transfers of ownership of trademarks, have been abolished. In particular, the CIPO no longer levies a fee to register a change of name, change of address, or change of corporate identity by a trade-mark owner, or to register a security interest or licence. The CIPO fee for registering an assignment (transfer of ownership) remains $100.00 per trade-mark.