New practice notice for opposition procedures to come into force

The Canadian Intellectual Property Office (CIPO) has issued a new practice notice regarding amendments to trademark opposition procedures. The new practice notice is due to come into effect on March 31 2009 and will replace the former practice notice.

According to the new practice notice, the amendments are intended to:
  • simplify and clarify the registrar’s benchmarks for granting extensions of time;
  • provide guidance with respect to the granting of extensions of time in exceptional circumstances; 
  • encourage parties to pursue settlement and mediation early in the opposition period; and
  • introduce a new practice of granting extensions of time amounting to a 'cooling-off' period.
With respect to extensions of time generally granted under Section 47 of the Trademarks Act, the practice notice sets out a series of benchmarks for the maximum extensions of time available. The practice notice also provides that the registrar will consider only one request for an extension of time up to each of the maximum benchmarks detailed in the practice notice. Therefore, the registrar will not grant multiple requests for extensions of time, even where such multiple requests amount to an extension of time within or up to the respective maximum benchmark.

Where the registrar has already granted the applicant or the opponent one or more extensions of time (for opposition proceedings commenced prior to March 31 2009), the practice notice provides, as a transitional measure, that the registrar will not grant the applicant or opponent any further extensions of time at that particular stage of the opposition proceeding (under the registrar’s benchmarks for maximum extensions of time as set out in the practice notice), with the exception of a nine-month cooling-off extension of time.

With respect to the cooling-off period, the practice notice provides that the registrar will generally grant each party one extension of time up to a maximum benchmark of nine months, on consent, to allow the parties to pursue settlement negotiations and/or mediation of the opposition. Accordingly, the parties may collectively be granted two extensions of time amounting to the possibility of an 18-month cooling-off period in which to pursue and finalize settlement of the opposition. The practice notice further provides that if the parties fail to negotiate a settlement within this time, they must carry on with the opposition proceedings and comply with the legislative and regulatory requirements whether or not settlement negotiations and/or mediation are continued.

However, the practice notice provides that either the applicant or the opponent may request one further extension of time (to a maximum of three months) beyond the benchmark if additional time is required to finalize settlement. However, the registrar will generally grant only one such extension and will generally not otherwise grant a further extension of time to any party to finalize settlement negotiations at any time during the opposition proceedings.

The cooling-off period is generally available to:
  • the opponent prior to filing the statement of opposition or the opponent’s Rule 41(1) evidence; and
  • the applicant prior to filing the counterstatement or the applicant’s Rule 42(1) evidence.
The practice notice also provides clarification with respect to the availability of extensions of time beyond the maximum benchmarks prescribed by the amendments. In this regard, the practice notice states that while the registrar will not generally grant extensions of time beyond the maximum benchmarks, extensions of time beyond the maximum benchmarks may be granted on a case-by-case basis, at the discretion of the registrar, if the party requesting the extension can demonstrate, on the facts of the particular case and given the stage of the proceeding, that there are exceptional circumstances justifying the further extension of time.

In addition, the practice notice provides guidance with respect to the granting of extensions of time based on exceptional circumstances. In addition to clarifying the nature of the information required to demonstrate exceptional circumstances (ie, “full and frank disclosure of all relevant facts”) and confirming that the threshold of information required to support such a request will increase with each additional request filed, the practice notice sets out examples of what may constitute an exceptional circumstance justifying the grant of an extension of time beyond the maximum benchmark. These include:
  • co-pending opposition proceedings in Canada between the same parties for related trademarks;
  • a recent change in a party’s instructing principal or trademark agent;
  • circumstances beyond the control of the person concerned (eg, illness, accident, death, bankruptcy or other “serious and unforeseen circumstances”);
  • assignment of the trademark that is either the subject of opposition or a trademark application or registration being relied upon by the opponent; and
  • a revised application for the trademark that is the subject of the opposition has been filed and the revision, if accepted, would put an end to the opposition proceedings or substantially change the nature of the proceedings.
In addition, the amendments provide parties with an avenue to have an oral hearing on short notice. Under the practice notice, parties to an opposition may seek, at any time after requesting an oral hearing, to have the oral hearing scheduled and heard on short notice, provided that such request is accompanied, among other things, by a statement that the hearing will not exceed two-and-a-half hours and that both parties consent to it being heard on short notice.

Ultimately, the new practice notice, while confirming CIPO’s commitment to the strict enforcement of time limitations in opposition proceedings, recognizes the importance of settlement and reflects the reality that settlement negotiations may occur at any point in an opposition.

Christina Capone Settimi, Cameron MacKendrick LLP, Toronto

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