Blog Post
Back to all blog posts
TheSpotlight

Reduction in Extensions of Time Available in Trademark Oppositions and Section 45 Proceedings

By: Jonathan Marun-Batista*

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.

Stage of Proceeding Statutory or Administrative Deadline Benchmark Extension One Cooling-Off Extension for Each Party Statement of Opposition 2 months from advertisement 2 months (formerly 4 months) Up to 7 months on consent for each party for a total of 14 months maximum (formerly up to 9 months for each party for a total of 18 months maximum) Counter Statement 2 months from date Registrar forwards Statement of Opposition 1 month (formerly 2 months) Opponent’s Evidence 4 months from service of Counter Statement Up to 2 months with the other party’s consent (formerly 3 months) Applicant’s Evidence 4 months from service of Opponent's evidence Up to 2 months with the other party’s consent (formerly 3 months) *If cross-examination on Opponent’s evidence is requested within 2 months of service of Opponent’s evidence, then: 2 months after cross-examination (formerly 4 months) or 1 month if cross-examination not completed (formerly 2 months) Cross-Examination Within the period specified by the Registrar in the notice of cross-examination (generally 2 months) Up to 2 months with the other party’s consent (no change) Cross-Examination – Replies to Undertakings Within the period specified by the Registrar in the notice of cross-examination (generally 1 month) Up to 1 month with the other party’s consent (no change) Reply Evidence 1 month from service of Applicant's evidence Up to 1 month with the other party’s consent (formerly 4 months) *If cross-examination on Applicant’s evidence is requested within 2 months of service of Applicant’s evidence, then: 2 months after cross-examination (formerly 4 months) or 1 month if cross-examination not completed (formerly 2 months) Opponent’s Written Representations 2 months from the date of the Registrar’s notice under section 57(1) of the Regulations Up to 1 month with the other party’s consent (formerly 2 months) Applicant’s Written Representations 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 Up to 1 month with the other party’s consent (formerly 2 months) Request for Hearing 1 month from the earlier of service of the Applicant’s written representations or 1 month from the expiry of such deadline N/A N/A


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.

Please contact a member of our Trademarks & Branding Group if you have any questions about these changes or how they may affect your trademark matters.

Related Areas of Expertise