Trademarks Opposition Board considers changes to opposition practice

In a practice notice published for comment on September 4 2008, the Trademarks Opposition Board announced that it is planning to amend its practice to simplify and clarify the registrar’s benchmarks for granting extensions of time, including a cooling-off period.

One of the most significant changes relates to a cooling-off period to allow parties to an opposition to pursue settlement. The cooling-off period will last for an initial maximum period of nine months, with an option to extend the period for an additional nine months on consent. The applicant may request a cooling-off period only prior to the deadline for filing a counterstatement. The proposed practice notice indicates that the registrar will generally not grant extensions of time for parties to pursue settlement negotiations at any other stage of the opposition proceeding. It is uncertain why the registrar would choose to restrict a cooling-off period to such an early stage of an opposition proceeding, when the parties may not yet have fully assessed the strengths and weaknesses of each other’s cases. If the parties fail to settle the opposition proceeding within this cooling-off period, they must carry on with the opposition proceeding and comply with all legislative and regulatory requirements, regardless of whether they are continuing with their settlement negotiations. The applicant can terminate the cooling-off period by filing and serving its counterstatement. The opponent may also terminate the cooling-off period by writing to the registrar to request a resumption of the opposition.

The proposed practice notice also provides detailed benchmarks for extensions of time during the various stages of an opposition. Extensions of time beyond the benchmark deadlines will be granted only in exceptional circumstances and must be “supported by a full and frank disclosure of all of the relevant facts”. Examples of such circumstances include:

the existence of co-pending opposition proceedings in Canada between the same parties for related trademarks;
a recent change in the party’s instructing principal or trademark agent; and
exceptional circumstances beyond the control of the person concerned (eg, illness, accident, death, bankruptcy and other serious and unforeseen circumstances).

In addition, either party may request one further extension of time beyond the benchmark if the parties require limited additional time to finalize and complete settlement negotiations. The facts must demonstrate clearly that the parties have already reached an agreement and merely require additional time to conclude and finalize the settlement, which will put an end to the opposition proceeding. Only one extension of time during the course of an opposition proceeding will be available for the parties to complete settlement negotiations fully. An additional proposed change will allow parties to request that an oral hearing be scheduled and held on short notice. This will allow the registrar to use hearing time made available by the cancellation or postponement of other opposition hearings. Parties will be given only 24 hours to confirm their attendance at a hearing on short notice before the registrar will go to the next pending opposition on the short notice list.

Feedback on the proposed changes was solicited from the public until October 24 2008. It is expected that any amendments to the practice of the board will not take effect until 2009. If the proposed changes are implemented, practice before the board could change dramatically.

Elliott Simcoe, Smart & Biggar/Fetherstonhaugh, Ottawa

Trademarks Opposition Board considers changes to opposition practice

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