Significant changes to the practice notices issued by the Trademarks Opposition Board (“TMOB”) “Practice in section 45 proceedings” (the “Section 45 Practice Notice”) and “Practice in trademark opposition proceedings” (the “Practice Notice for opposition proceedings”) came into effect on December 1, 2023. These changes have considerably reduced the extensions of time and cooling off periods that are available to trademark owners and are part of the TMOB’s continuous efforts to provide more timely and efficient proceedings. Deadlines that had already been requested or fixed prior to December 1 will not be affected by these changes.
Section 45 proceedings
Section 45 of Canada’s Trademarks Act (the “Act”) provides a summary proceeding to remove registered trademarks from the trademarks register, either on the initiative of the Registrar or at the request of a third party, on the basis that the trademark has not been used in Canada during the last three years.
The Registrar of Trademarks may grant extensions of deadlines fixed by the Act or the regulations made under the Act (the “Regulations”). These “benchmark extensions” have been affected by the changes to the Section 45 Practice Notice. In particular, the amendments to the Section 45 Practice Notice have reduced the maximum length of an extension for a registered owner to file evidence in response to a section 45 notice. Trademark owners will now only be entitled to a 2 month extension of time as opposed to the previously available 4 month extension.
A new ground for an extension of time based on “exceptional circumstances” has also been added. All existing exceptional circumstances remain available to request an extension. Now an extension can be requested on the basis of inability to meet a deadline despite acting diligently. These requests must set out a reasonable explanation as to why the deadline cannot be met and must detail the past actions taken by the party prior to the deadline as well as the plan to meet the deadline. The request should demonstrate reasonable effort, promptness, and diligence and state the length of time required. The TMOB, however, will determine the length of the extension it will grant, if at all, based on the circumstances.
The updated Section 45 Practice Notice provides the following examples of circumstances that that may be considered to qualify for this new basis for an extension request: i) inadvertent errors or omissions by a party; ii) an inherently lengthy evidence preparation process; or iii) the unavailability of relevant deponents due to involvement in other matters where the party has exhausted all efforts to find an alternate deponent. Notably, ongoing settlement negotiations between the parties will not fall within this new ground to request an extension.
Opposition proceedings
The amended Practice Notice for opposition proceedings also significantly reduces the benchmark extensions of time that are available in an opposition proceeding as summarized below:
Statement of Opposition
- Statutory or Administrative Deadline: 2 months from the date of advertisement of application
- Previous Benchmark Extension: 4 months
- Amended Benchmark Extension: 2 months
Counter Statement
- Statutory or Administrative Deadline: 2 months from the date that the Registrar forwards Statement of Opposition
- Previous Benchmark Extension: 2 months
- Amended Benchmark Extension: 1 month
Opponent’s evidence
- Statutory or Administrative Deadline: 4 months from the effective date of service of Counter Statement
- Previous Benchmark Extension: Up to 3 months with the other party’s consent
- Amended Benchmark Extension: Up to 2 months with the other party’s consent
Applicant’s evidence
- Statutory or Administrative Deadline: 4 months from the effective date of service of Opponent’s evidence (or statement)
- Previous Benchmark Extension: Up to 3 months with the other party’s consent
- Amended Benchmark Extension: Up to 2 months with the other party’s consent
Reply evidence
- Statutory or Administrative Deadline: 1 month from the effective date of service of the applicant’s evidence (or statement)
- Previous Benchmark Extension: Up to 4 months with the other party’s consent
- Amended Benchmark Extension: Up to 1 month with the other party’s consent
Opponent’s written representations
- Statutory or Administrative Deadline: 2 months from the date of the Registrar’s notice
- Previous Benchmark Extension: Up to 2 months with the other party’s consent
- Amended Benchmark Extension: Up to 1 month with the other party’s consent
Applicant’s written representations
- Statutory or Administrative Deadline: 2 months from the earlier of the effective date of service of the Opponent’s written representations (or statement) or the expiry of such deadline
- Previous Benchmark Extension: Up to 2 months with the other party’s consent
- Amended Benchmark Extension: Up to 1 month with the other party’s consent
In addition to the benchmark extension reductions summarized in the chart above, the cooling off periods available for parties to engage in settlement discussions have also been significantly reduced. While each party in an opposition proceeding is currently able to request one cooling off period for a period of up to 9 months with the other party’s consent, the new changes have reduced this cooling off period to a period of up to 7 months.
The TMOB has also added a new subsection to the Practice Notice for opposition proceedings, similar to the section 45 proceedings, requiring that parties may be granted extensions of time where the party can demonstrate a consistent overall pattern of diligence, promptness, and reasonable effort to meet deadlines.
Parties to section 45 and opposition proceedings should note that ongoing settlement negotiations between the parties to the proceedings do not assist in demonstrating the new justification for an extension based on the party being unable to meet the deadline despite having acted diligently and promptly.
Trademark owners will benefit from the more timely and efficient proceedings but should be aware of the shortened timeframes for the various steps in the proceedings.
If you have any questions about the new practice directions for section 45 and opposition proceedings, please feel free to reach out to any member of Miller Thomson’s Intellectual Property Group.
