On 31st March 2009 Canadian trademark opposition practice changed when a new practice notice issued by the Trademarks Opposition Board came into force. This new practice notice replaced the practice notice issued by the board on 1st October 2007. Significant features of the new practice notice include the introduction of a cooling-off period and clearer guidelines with respect to the board's procedures for granting extensions of opposition deadlines.
The new practice notice brings Canadian practice further into line with European opposition practice by making available a cooling-off period to allow the parties to negotiate a settlement. The opponent and the applicant will each be entitled to one extension of time up to a maximum of nine months. The opponent may request an extension either before filing the statement of opposition or before filing its evidence. The applicant can request an extension either before filing a counter-statement or after it has received the opponent’s evidence and before it files its own evidence. Thus, the parties can obtain a combined 18-month cooling-off period within which to negotiate settlement of the opposition. If the parties fail to conclude negotiations within this time, they may be able to request one further three-month exceptional extension to finalise a settlement agreement. However, the board will grant only one such extension during the course of the opposition, which could be granted either at the end of the cooling-off period or at any other stage of the opposition.
The new practice notice also seeks to clarify, and in some cases amend, procedures for granting extensions of time in oppositions. A major criticism of the post-1st October 2007 practice notice opposition procedures was the lack of clarity with respect to the board's exercise of discretion in granting extensions of opposition deadlines. The new practice notice aims to remove this uncertainty by setting general benchmarks for maximum extensions of time, as well as by defining what would constitute exceptional circumstances justifying additional extensions beyond the maximum benchmarks.
Generally, the board will, if given sufficient reasons, grant one extension of each deadline up to a maximum benchmark. In exceptional circumstances, the board will grant extensions of time beyond the maximum benchmarks. Requests for extensions based on exceptional circumstances do not require the other party’s consent, but must be supported by a full and frank disclosure of all the relevant facts. While the board has indicated that it will assess requests for exceptional extensions of time on a case-by-case basis, the new practice notice lists specific examples of circumstances that would qualify as exceptional, including:
- the existence of co-pending opposition proceedings before the board;
- a recent change in a party’s instructing principal or trademark agent;
- a recent assignment of relevant trademarks;
- a proposed amendment to the application which, if accepted, would put an end to the opposition; and
- other circumstances that are beyond the control of the requesting party (eg, illness, accident, death, bankruptcy or other serious and unforeseen circumstances).
Finally, the new practice notice revises the board's procedures for scheduling oral hearings. The most significant changes to these procedures include providing oral hearings on short notice and removing the possibility of postponing a hearing to negotiate settlement of the opposition before a decision is issued.