Until recently, opposition and administrative cancellation proceedings in Canada have been particularly lengthy. It was not uncommon to see decisions being issued in non-use cancellation proceedings before the Canadian Trademarks Opposition Board (TMOB) 3-4 years after their start. Similarly, in many cases decisions in opposition proceedings would issue 5-6 years after the end of the initial 2 month period to oppose. This is not because these types of proceedings are particularly cumbersome in Canada. Contrary to US oppositions there is no discovery in oppositions and administrative cancellation proceedings, only cross-examinations on affidavit are possible. The availability of very generous extensions of time and long delays to set a hearing or to render a decision on the basis of a written record explain most of these delays. This is changing rapidly.
A major shift in extensions of time available before the Trademarks Opposition Board has occurred on December 1st, 2023. It was previously possible to secure a 4 month extensions of time in order to prepare a Statement of Opposition without much justification beyond the general need to investigate the grounds of opposition and no need to secure the Applicant's consent. This is cut down to 2 months for requests made as of December 1st for national trademark filings. A 4 month extension of time will remain available for Madrid Protocol applications. In non-use cancellation proceedings, the registrant was previously able to request a 4 month extension of time to prepare its evidence on the basis of justification that is just as sparse and without any need to secure the requesting party's consent. This is now limited to a 2 month extension of time. In both cases, these will still be considered "benchmark" extension of time and will remain available on the basis of a very modest level of justification. The changes will not remove the possibility of securing cooling off periods in opposition proceedings (one at the request of the applicant and the other at the request of the opponent), but the maximum duration of each cooling off period will be reduced to 7 month (down from 9 months). Many other "benchmark" extensions of time are affected by these changes.
The TMOB has been actively hiring additional administrative judges in order to reduce the time to secure a hearing and a decision. Whereas, in the recent past, it would take 24 months for a hearing to be scheduled, this is anticipated to be reduced to 12 months in 2024-2025. Hearings are held in approximately 75% of opposition matters and in approximately 50% of non-use cancellation matters, which means that this change will have a significant impact. Overall, the TMOB is expecting that it may be possible to secure a judgment in a non-use cancellation proceeding in 22 to 26 months and in 31 months in the best of cases in an opposition proceeding (assuming no cooling off period has been requested by the parties). The TMOB is also currently considering whether hearings could be set on an expedited basis in non-use cancellation matters if there is a pressing need to resolve the fate of a registration, for example if the registration is being asserted in judicial proceedings or in opposition proceedings.
These changes are very welcome in Canadian trademark practice and will result in parties knowing more quickly where they stand with respect to what is often one of their most valuable intellectual property assets.
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