Canada: Effective Dec. 1, 2023: Reduced Extensions In Trademark Oppositions And Section 45 Proceedings

Effective Dec. 1, 2023, extensions of time available in oppositions and section 45 non-use cancellation proceedings will be reduced by as much as 50 per cent. To take advantage of the current longer extension periods, requests must be filed before Dec. 1.

While these changes mean that opposition and section 45 proceedings will move in a more timely and efficient manner, the changes also mean that parties will have much less time to prepare for each step.

Background and policy considerations for changes

The goal of Canada's Trademark Opposition Board is for Canada to become the preferred jurisdiction for disposition of trademark disputes. The Board is now well staffed with seasoned experts who are able to render high-quality decisions so their focus now is on efficient turnaround times. A recent customer satisfaction survey highlighted two main complaints:

1. the significant length of time it takes to obtain a hearing date after filing a request for one (approximately 18 months plus); and
2. the significant length of time associated with the proceedings overall, regardless of the hearing date delay.

The Board's recent actions have demonstrated its commitment to making improvements. Over the past three years, the Board has worked hard to reduce the backlog of hearings. The Board is currently scheduling some oral hearings to take place one to two months after the date of the initial request, a notable advancement over the nearly 18 months that step has taken in past.

New exceptional circumstance extension introduced

With the abbreviation of extension terms, the Board will also introduce a new "exceptional circumstances" extension. While all existing exceptional circumstances remain available to request delay, as of Dec. 1, 2023, the inability to meet a deadline despite acting diligently will be introduced.

These requests must set out an explanation as to why it will not be possible to meet the upcoming deadline and must detail the past actions taken by the party as well as the plan to meet the deadline. The request should state the amount of delay needed; although the Board will ultimately decide the length of the extension it will grant, if at all, based on the circumstances. Importantly, this new exceptional circumstance will not apply to settlement negotiations. The new practice notice provides the following examples of circumstances that may be considered to qualify for this new "exceptional" delay:

• An inadvertent error or omission by a party or agent
• An inherently lengthy process of evidence preparation
• The unavailability of relevant deponents due to involvement in other matters, if the party has exhausted all efforts to find alternative deponents

Section 45 proceedings – What will change

Registered owners will only be allowed a two-month (rather than four-month) benchmark extension to file evidence.

Opposition proceedings – What will change

Available extensions of time will be reduced, as shown in the chart below. Importantly, the first extension to oppose a Madrid Designation will remain four months after Dec. 1, 2023. After that first extension, Madrid Designations will face the same reduced timelines as a domestic case as set out below.

Read the original article on GowlingWLG.com

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.