New rules for opposition time limits mooted


The government of Canada has proposed amendments to the regulations pertaining to the time limits for preparing documents during opposition proceedings. Currently, these time limits are so short that it is standard practice for both parties to request extensions of time at every step of the proceeding. The purpose of the proposed amendments is to cut costs and paperwork by reducing the need for such time extensions.

Specifically, the proposed regulations would extend the time limit:

  • for filing a counter statement from one month to two months;

  • for filing Rule 41 (opponent's) evidence from one month to four months; and

  • for filing Rule 42 (applicant's) evidence from one month to four months.

The time limits remain unchanged under the proposed regulations for the following:

  • filing a statement of opposition;

  • filing Rule 43 (reply) evidence;

  • filing a written argument; and

  • requesting an oral hearing.

Since the proposed time limits do not correspond to the time limits plus the standard extension under the current rules, it is reasonable to expect that the proposed amendments will result in only a minor reduction of extension requests.

The proposed changes to the time limits would also apply to the lesser known objection proceedings which apply to geographical indications. Finally, the amendments would also formalize the use of couriers as a method of service during opposition and objection proceedings, and clarify how the effective date of service is to be determined.

Another change is that there would be no charge for certified copies that are provided from the Trademarks Office to the Federal Court for purposes of appeal or judicial review. This would also apply to litigation involving copyrights, industrial designs, and integrated circuit topographies.

John Macera, Macera & Jarzyna, Ottawa

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