The Canadian Intellectual Property Office has announced that as of December 1, 2023, updates to the Practice Notices for trademark opposition proceedings and section 45 (non-use cancellation) proceedings will come into effect. These changes are being made in furtherance of the Trademarks Opposition Board’s continuing efforts to provide more timely and efficient proceedings. In brief, the updates shorten the time period within which cross-examination must be completed, cap available extensions of time, and introduce a new exceptional circumstance to justify an extension of time. All cross-examination requests and requests for extensions of time made on or after December 1, 2023, will be subject to the new Practice Notices. Trademark owners and their agents involved in trademark opposition proceedings or section 45 proceedings will need to work diligently to ensure that all deadlines are met within the newly imposed timeframes.

Extensions of Time Reduced

The Canadian Intellectual Property Office publishes practice notices to provide guidance on the processes in trademark opposition proceedings and the expungement procedure for non-use under Section 45 of the Trademarks Act (the “Act”). The majority of the changes introduced in the Practice Notices reduce the maximum extension period available in opposition and section 45 proceedings.

Trademark Opposition Proceedings

The majority of trademark opposition proceedings are concluded when the parties agree to amicably resolve the proceeding by way of settlement. To allow the parties to explore the possibility of settlement, the Registrar of Trademarks (the “Registrar’s”) general practice is to give each party an opportunity to extend the proceedings to pursue and finalize settlement. This extension is referred to as a “cooling off” extension of time. In the updated Practice Notice, the maximum allowable “cooling off” extension of time will be reduced from nine months to seven months.

The Registrar may also grant extensions of any deadline fixed under the Act or the Trademarks Regulations (the “Regulations”). These extensions are referred to as benchmark extensions of time. Below is a summary of the changes to the benchmark extensions available in trademark opposition proceedings:

• Extension of time available to an Opponent to file a Statement of Opposition reduced from four months to two months.
• Extension of time available to an Applicant to file a Counter Statement reduced from two months to one month.
• Extension of time available to an Opponent to submit evidence (or a statement that it does not wish to submit evidence) reduced from three months to two months.
• Where an Applicant requests a cross-examination within two months of the Opponent completing their evidence, the extension of time available to an Applicant to file evidence reduced from four months to two months. If the cross-examination is not completed, the deadline for filing evidence is reduced from two months to one month.
• Extension of time available to an Opponent to submit Evidence in Reply reduced from four months to one month.
• Where an Opponent requests a cross-examination within one month of the Applicant completing their evidence, the extension of time available to an Opponent to file Evidence in Reply reduced from four months to one month and if the cross-examination is not completed, the deadline for filing Evidence in Reply is reduced from two months to one month.
• Extension of time available to either party to file its Written Representations (or a statement that none will be submitted) reduced from two months to one month.

Section 45 Proceedings

A benchmark extension of time is also available to a registered trademark owner in respect of its deadline to furnish and serve its evidence in response to a section 45 notice. Under the new Practice Notice for section 45 proceedings, however, the maximum allowable extension of time will be reduced from four months to two months.

Shortened Period to Complete Cross-Examinations

Under the new Practice Notice for opposition proceedings, where the Registrar orders a cross-examination, the period granted to complete the cross-examination will decrease from four months to two months, which means that any cross-examination requests made on or after December 1, 2023, will be provided the new two-month period to conduct the cross-examination.

New Exceptional Circumstance – Inability to Meet an Upcoming Deadline Despite Acting Diligently

In both opposition proceedings and section 45 proceedings, the Registrar can grant an extension of time beyond the benchmark if it determines that the party has demonstrated exceptional circumstances justifying a further extension of time. Both Practice Notices list examples of exceptional circumstances the Registrar may consider as justifying a further extension of time.

As of December 1, 2023, a new justification for granting an exceptional circumstance extension of time will be introduced – inability to meet an upcoming deadline despite acting diligently. Where a party is unable to meet an upcoming deadline but has made reasonable efforts to comply with the requirements of the Act and Regulations and to act promptly and diligently at all times, an extension may be granted if the party is able to demonstrate a consistent overall pattern of reasonable effort, promptness and diligence in its efforts to meet the upcoming deadline. For example, a party may be granted an extension under this exceptional circumstance if delay was due to an inadvertent error or omission by a party or agent or an inherently lengthy process of evidence preparation (e.g., expert or survey evidence).

Recommendations for Trademark Owners

The changes introduced in the updated Practice Notices for opposition and section 45 proceedings will apply to any cross-examination requests or requests for extensions of time made on or after December 1, 2023. As the changes being introduced have significantly shortened the time period to complete cross-examination and the available extensions of time, trademark owners and their agents will need to work extra diligently to ensure that all deadlines are met within the newly imposed timeframes.