On December 1, 2023, the Canadian Trademark Opposition Board (the "Board") reduced the extensions of time available in section 45 proceedings and trademark opposition proceedings by as much as 50 per cent. While these changes are intended to facilitate more efficient proceedings and help alleviate existing backlogs and wait times, they also reduce preparation time for the parties involved. Parties should be prepared to be more proactive in the preparation of evidence and consideration of settlement in view of the shortened time frames.
Changes to Opposition Proceedings
The new statutory/administrative deadlines and available extensions of time at each stage of the proceeding are summarized in the table below.
New Exceptional Circumstances Extension
The Board also introduced a new "exceptional circumstances" extension for instances where a party, despite acting diligently, is unable to meet a deadline. To qualify, parties must be able to demonstrate a consistent overall pattern of reasonable effort, promptness and diligence in their efforts to meet the upcoming deadline.
The request to the Registrar should clearly explain why meeting the upcoming deadline is not possible, detail the efforts made to meet it, and indicate the duration of time needed. The Board determines the appropriate length of the extension, if any.
This new exceptional circumstance extension is not intended to apply to delays caused by settlement negotiations. Rather, it is intended to apply to situations like inadvertent errors or omissions, lengthy evidence preparation processes (such as expert or survey evidence), and the unavailability of deponents if all alternative options have been exhausted. Parties must still make reasonable efforts to comply with the requirements of the Trademarks Act, RSC 1985, c T-13 and Trademarks Regulations, SOR/2018-227, and act promptly and diligently at all times.
Changes to Section 45 Proceedings
Registered owners are now only allowed a two-month (rather than four-month) benchmark extension to file evidence.
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.
