The Canadian Intellectual Property Office (CIPO) announced significant changes to trademark opposition and non-use cancellation proceedings effective December 1, 2023.
The changes will significantly accelerate the timing of such proceedings before the Trademarks Opposition Board (TMOB) as they truncate benchmark extensions, as well as opposition cooling-off periods. The changes will also introduce new requirements for extensions based on exceptional circumstances, and a new exceptional circumstance for an extension based on the inability to meet the deadline despite acting diligently. These and additional changes are discussed below:
Changes to Extensions of Time – Benchmark Extensions
The new regime generally truncates the allotted time for benchmark extensions in opposition proceedings.
Statement of Opposition & Counter Statement: Under the new regime, a prospective opponent is entitled to a benchmark extension of two months (currently four months) to file a Statement of Opposition, and an applicant is entitled to an extension of one month (currently two months) to file a counter statement.
Evidence: Under the new regime, an opponent or applicant can only obtain an extension of up to two months (currently three months) with the consent of the other party to file and serve its evidence in chief.
Cross-examination: The cross-examination deadline will still be set by the TMOB, but the changes suggest that the parties will be given two months to conduct examinations and file transcripts (reduced from the four months typically allotted under the current practice), and one month to file answers to undertakings (which is the same as the current practice). These deadlines will be specified in the cross-examination order issued by the TMOB.
Reply Evidence: Under the new regime, an opponent can obtain an extension of time of up to one month (currently four months), with the consent of the other party to file reply evidence.
Written Representations: Under the new regime, benchmark extensions of up to one month (currently two months) are available to both parties with the consent of the other party.
Changes to Extensions of Time – Cooling off Periods
Under the new regime, parties can each obtain one cooling off extension of seven months (currently nine months) with the consent of the other party. The maximum allowable cooling off period in any one opposition proceeding has therefore been reduced from eighteen months to fourteen months.
Additional Opposition Changes
Under the current regime, a request for an interlocutory ruling has no effect on an applicant’s deadline to file a counter statement unless the applicant also requests an extension of time prior to or at the same time as the request for the interlocutory ruling. Under the new regime, there is no requirement for the extension of time request to be filed prior to or at the same time as the request for the interlocutory ruling.
Cross Examination Orders – Effects on Applicant’s Evidence
Generally, an applicant’s request for a cross examination order has no effect on the deadline to submit and serve its evidence. In fact, cross examination orders will generally specify that they have no effect on any outstanding deadlines in the proceedings.
However, under the current regime, an applicant can obtain an extension of time of four months, from the completion of cross examination to file evidence (or statement), if the request for cross examination is made within two months from the completion of the opponent’s evidence, and the applicant requests an extension of time under to run from the completion of cross examination. If the applicant defaults in completing the cross examination, within the deadline previously fixed by the Registrar, the four month extension of time to file and serve evidence will be automatically reduced to two months.
Under the new regime, the Registrar will only grant an extension of time of two months to the applicant to file evidence, and if cross examination is not completed within time, the two month extension will automatically reduce to one month.
Note, generally, that where an applicant is granted an extension of time under this section i.e., to file and serve evidence on completion of cross examination, the Registrar will generally not also grant a further extension of time up to the maximum benchmark for filing evidence.
Cross Examination Orders – Effects of Opponent’s Reply Evidence
Under the current regime, after the applicant files evidence, the opponent can request a cross examination order, and request an extension of time of four months from the completion of cross examination to file reply evidence. To obtain the extension of time, the cross examination order must be requested within one month of the completion of all the applicant’s evidence. If the opponent defaults in completing the cross examination within the deadline previously fixed by the Registrar, the four month extension of time to file and serve reply evidence will be automatically reduced to two months.
Under the new regime, the Registrar will only grant an extension of time of one month from the completion of cross examination to file and serve reply evidence, which is applicable regardless of whether the opponent completes the cross examination or not.
Note, generally, that where an opponent is granted an extension of time under this section i.e., to file and serve reply evidence on completion of cross examination, the Registrar will generally not also grant a further extension of time up to the maximum benchmark for filing reply evidence.
NON-USE CANCELLATION PROCEEDINGS
Changes to Extensions of Time: Benchmark Extension to Prepare and File Registered Owner’s Evidence
In non-use cancellation proceedings, the Registered Owner is given an initial three-month deadline to file evidence of use (this is not changing). The Registered Owner is also entitled to a benchmark extension, which, under the current regime, is four months, but under the new practice will be reduced to two months.
CHANGES APPLICABLE TO BOTH OPPOSITION AND NON-USE CANCELLATION PROCEEDINGS
Changes to Extensions of Time – Exceptional Circumstances
All requests for an extension beyond the benchmark period in opposition and non-use cancellation proceedings should be clearly marked “Exceptional circumstances/extension request”, and under the new regime, the requesting party must include the following information:
- The length of the delay sought; and
- Sufficient details as to the timeline and steps planned to meet the proposed extended deadline.
The Registrar will then decide the length of the extended period based on what is appropriate in the circumstances and on terms as deemed appropriate.
New Exceptional Circumstance - Inability to Meet an Upcoming Deadline Despite Acting Diligently
The new practice in opposition and non-use cancellation proceedings will include a new basis upon which a party can request an exceptional circumstances extension.
Generally, parties in opposition and non-use cancellation proceedings are required to make reasonable efforts to comply with the requirements of the Trademarks Act and Regulations. Where a party has done so, yet remains unable to meet an upcoming deadline, an exceptional circumstances exception 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 an upcoming deadline. When seeking an extension based on this exceptional circumstance, the requesting party must provide the following information:
- An explanation as to why it will not be possible to meet the upcoming deadline at issue; and,
- The actions taken prior to the upcoming deadline to meet it.
Delay in preparing for an upcoming deadline due a party’s participation in settlement negotiations (for example, due to negotiating terms, exchanging draft agreements and delay in executing settlement agreement) will not assist the party in showing that it acted diligently. If a party requires an extension of time to finalize settlement, then they should use the existing ground that allows parties to request an exceptional circumstance extension on this basis in opposition proceedings (“finalizing settlement” is not considered an exception circumstance justifying an extension in non-use cancellation proceedings).
Below are examples of circumstances that may be considered as exceptional for extending deadlines other than at the cross-examination stage (additional exceptional circumstances relating to cross examination are addressed in section X.3.7 of the Practice Notice).
- An inadvertent error or omission by a party or agent;
- Inherently lengthy process of evidence preparation (for example, expert or survey evidence);
- Unavailability of relevant deponents due to involvement in other matters, if the party has exhausted all efforts to find alternative deponents