The Canadian Trade-marks Opposition Board (TMOB) has announced
that as of March 31, 2009, it will be implementing new guidelines
for practice in trademark opposition proceedings (the Practice
Notice). The new Practice Notice introduces the availability of a
nine-month cooling-off period to allow parties to pursue settlement
or mediation, as well as changes to maximum benchmarks for
extensions of time during the opposition process. The Practice
Notice also allows parties to expedite the hearing of their case by
requesting that it be scheduled and heard on short notice
(approximately two days) in the event of a cancellation of a
previously scheduled hearing.
New cooling-off period
Each party will be permitted to request the
"cooling-off" extension only once during the opposition
proceedings, and this opportunity is available only in the earliest
stages of the opposition. The opponent will be allowed to request
the cooling-off period prior to filing a statement of opposition,
or prior to filing its evidence. The applicant will be permitted to
request the cooling-off period prior to filing a counter-statement,
or prior to filing its own evidence.
The Practice Notice states that, other than these two nine-month
periods, no further extensions will be granted to allow the parties
to discuss settlement. However, the Notice also provides that, as
an "exceptional circumstance" one further three-month
extension of time may be granted, on consent of both parties, to
fully finalize and complete settlement negotiations or mediation.
This last extension will only be granted once in the
Changes to benchmarks for extensions of time
The Board will no longer consider multiple requests for
extensions. At each stage of the proceedings, a party may make a
single request for an extension of time, up to the maximum
benchmark (not including a request for the cooling-off period). The
new maximum benchmarks are as follows:
Extension to file a Statement of Opposition: 3 months (reduced
Extension to file a Counterstatement: 2 months (no change)
Extension to file evidence: 3 months (increased from 2), or 4
months from the completion of cross-examination, if
cross-examination is requested
Extension to file Opponent's reply evidence: 4 months
(reduced from 6)
Extension to file written arguments: 4 months (reduced from
Specific examples of the types of exceptional circumstances that
might justify additional extensions of time beyond the standard
benchmarks are provided in the Practice Notice. These include: the
need to synchronize deadlines for co-pending opposition
proceedings; a change in trademark agent or lawyer; a recent
assignment or revision of the trademark application at issue;
illness, accident, death or bankruptcy. The Practice Notice also
offers some examples of exceptional circumstances that could
justify an extension of a deadline to conduct cross-examination,
such as the need to wait for transcripts or responses to
undertakings given in a cross-examination.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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