Originally published in Blakes Bulletin on Intellectual Property, December 2007
Amendments to the Trade-marks Regulations came into force on October 1, 2007 and apply to all trade-mark applications advertised in the Trade-marks Journal on or after October 1, 2007. As a result, such oppositions to applications advertised on or before October 1, 2007 will be treated differently than those advertised after October 1. The amendments are explained in a practice notice dated September 26, 2007. The amendments affect opposition proceedings, with a particular emphasis on the deadlines applicable at various steps therein. In theory, the amendments reflect an effort to streamline the opposition process, reduce costs to parties and to reduce the ability of the parties to extend deadlines for lengthy periods of time.
In order to avoid the associated administrative burden and costs for the parties to seek extensions and for the Registrar to consider these requests, the new rules increase the time limit for filing a counter statement under Rule 39 from one month to two months, and for filing opponent’s and applicant’s evidence under Rules 41 and 42, respectively, from one month to four months.
Despite the extended timelines stipulated in the new rules, the actual time limits will, in theory, be reduced since requests for extensions of time will be more closely scrutinized and will only be granted where the circumstances justify the request.
Time limitations will now be strictly enforced. In the past, if both parties consented, a party could seek and expect to receive successive extensions of time at any particular step in the proceeding. This practice was used primarily in situations where parties were attempting to negotiate settlement.
As a result of the amendments and the accompanying practice notice, the Opposition Board will examine requests for extensions of time carefully and may refuse to grant the extension of time, even where the parties consent and reasons for the request have been provided. However, the preamble to the practice notice specifically indicates that its provisions are guidelines only, and are not binding. It remains to be seen how the Opposition Board will apply and enforce the new deadlines.
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