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 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).
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