Less time to be granted for oppositions and declarations

Practice changes by the Canadian Trademarks Office indicate that it intends to reduce the number of extensions of time that it is willing to grant applicants and opponents.

With respect to oppositions, the Opposition Board has announced a new comprehensive Practice Notice, which came into effect on October 1 2007. The primary changes relate to the time periods that the board will grant to complete each stage of opposition proceedings. On the one hand, amendments to the Trademarks Regulations, which also came into force on October 1 2007, have modestly increased the initial periods granted to file a counterstatement (from one to two months) and file evidence (from one 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 that 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.

The effects of these changes will include the following:

• Parties will have to conduct settlement negotiations more briskly than has been common to date;
  
  
• Parties facing deadlines to file evidence will have to prepare evidence earlier and more quickly than has been common to date; and
  
  
• Parties facing evidence deadlines will likely wish to work on evidence preparation even while simultaneously pursuing settlement negotiations.

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:

• Phase 1 - the notice of allowance sets an initial declaration due date of no less than three years beyond the filing date of the application.
  
  
• Phase 2 - the office has readily granted time extensions for a total period of three years beyond the initial due date (in most cases, six years beyond the filing date of the application).
  
  
• Phase 3 - for extensions requested beyond the first two phases, 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 3. From September 2007 the office has begun to issue final extension grants for applications in Phase 3, making it clear that any further extension is quite unlikely. It appears that the office intends to sharply curtail the granting of extensions in Phase 3.

Applicants may respond to this limitation on the number of extensions available and obtain further time to commence use by filing a fresh application once the original application has received three years of time extensions. Provided that 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 - that is, a total of 12 years between the two applications.

To date, the office has been quite liberal in granting time extensions to respond to examiner's reports. While the office has made no official announcement in this regard, it is likely that, in the coming months, the office will begin to implement parallel restrictions on the number of time extensions that it is willing to grant to applicants to respond to examiner's reports.

David Bryan, Gowling Lafleur Henderson LLP, Ottawa