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:
- the significant length of time it takes to obtain a hearing date after filing a request for one (approximately 18 months plus); and
- 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.
| Stage of Proceeding |
Statutory or Administrative Deadline |
Benchmark Extension |
Cooling Off Extension for Each Party on Consent |
| Pre-Dec 1 |
Post-Dec 1 |
Pre-Dec 1 |
Post-Dec 1 |
| Statement of Opposition |
2 months from advertisement |
4 months |
2 months |
Up to 9 months (18 months maximum) |
Up to 7 months (14 months maximum) |
| Counter Statement |
2 months from date Registrar forwards Statement of Opposition |
2 months |
1 month |
| Opponent's evidence |
4 months from service of Counter Statement |
Up to 3 months with consent |
Up to 2 months with consent |
| Applicant's evidence |
4 months from service of Opponent's evidence/statement |
Up to 3 months with consent |
Up to 2 months with consent |
| Applicant's evidence (where cross-examination order request is made within 2 months of completing opponent's evidence) |
See "Benchmark Extension"; depends on whether cross-examination is completed |
4 months after cross-examination; 2 months if in default of completing cross-examination |
2 months after cross-examination; 1 month if in default of completing cross-examination |
| Reply evidence |
1 month from service of Applicant's evidence/statement |
Up to 4 months with consent |
Up to 1 month with consent |
| Reply evidence (where cross-examination order request is made within 1 month of completing applicant's evidence) |
See "Benchmark Extension"; depends on whether cross-examination is completed |
4 months after cross-examination; 2 months if in default of completing cross-examination |
1 month after cross-examination |
| Opponent's written representations |
2 months from Registrar's notice |
Up to 2 months with consent |
Up to 1 month with consent |
| Applicant's written representations |
2 months from earlier of: service of opponent's written representations/statement or expiry of such deadline |
Up to 2 months with consent |
Up to 1 month with consent |
If you have any concerns or questions about these changes, please reach out to one of the authors or your Gowling WLG professional.