New practice notice for trademark opposition proceedings effective March 31, 2009

by Sangeetha Punniyamoorthy

The Trademarks Opposition Board recently changed its opposition proceeding practice, as outlined in a new practice notice. The practice changes are intended, in part, to reduce the timeline of oppositions and to promote early settlement.

Background

Prior to October 2007, the Opposition Board generally granted long extensions of time at any stage of an opposition. In October 2007, the Board revised its practice to curtail the significant length of oppositions; this new practice notice introduces even more changes to discourage undue delay in opposition proceedings.

The most substantial changes apply to the granting of extensions of time, although there are also some changes to correspondence, service, interlocutory rulings and scheduling of hearings. The new practice notice simplifies and clarifies the benchmarks for granting extensions of time, introducing general maximum benchmarks and a nine month “cooling-off” extension of time available to each party. The following outlines some of the more relevant changes:

A) Interlocutory Rulings

Before filing and serving a counter statement, the applicant may request an interlocutory ruling to strike all or any portion of the opponent’s pleadings.  Generally, this request has no effect on any outstanding deadlines.  The Registrar will generally give the opponent the opportunity to reply and/or request leave to file an amended statement of opposition.

Once evidence has been filed by an opponent in accordance with Rule 41(1) of the Trade-marks Regulations, issues concerning striking all or any portion of the opponent’s pleadings will only be considered at the decision stage.

The Registrar will generally grant an applicant a one month extension of time from the date of the Registrar’s interlocutory ruling to file and serve its counter statement in cases where the applicant specifically makes such a request under s. 47 of the Trade-marks Act.

B) Extensions of Time – General Benchmarks

All requests for extensions of time will be considered according to whether the party requesting the extension is seeking to extend the initial time limit fixed by the Trade-marks Act or Regulations, or if they are seeking to extend a deadline for which an extension of time has already been granted.  With respect for extensions of time for filing evidence, the Registrar will also consider whether the trade-mark application in question was advertised on or after October 1, 2007 or before October 1, 2007.

The Registrar will henceforth only consider one request for an extension of time up to each of the maximum benchmarks.  Requests will not be granted for multiple extensions even if they amount within or up to the maximum benchmark; i.e., if the benchmark is nine months, one cannot request a six month extension and then a three month extension. Only one request will be granted.

As a transitional measure in cases where the Registrar has already granted the applicant or opponent one or more extensions of time at a particular stage of the opposition, the Registrar will generally not grant any further extensions of time at that particular stage of the opposition with the exception of the maximum benchmark of nine months, on consent, amounting to a cooling-off period as detailed below.

C) Cooling-Off Period

Prior to the expiration of either the time fixed by the Act or the time granted by the Registrar by way of an extension of time, the Registrar will generally grant each party one extension of time up to a maximum benchmark of nine months, on consent, which may be requested by the opponent either before the filing of its statement of opposition or its Rule 41(1) evidence and by the applicant either before the filing of its counter statement or its Rule 42(1) evidence.  The Registrar will not generally grant the parties extensions of time in addition to those two nine month extensions of time for the parties to negotiate or mediate at any other stage of the proceeding.  If the parties fail to settle within the eighteen-month cooling off period they must carry on with the proceedings and comply with all requirements regardless of continuing settlement negotiations.

One further exceptional three month extension may be granted to finalize settlement, if settlement is not reached during either nine month extension. Other general benchmarks for maximum extensions of time at different stages of the proceeding have also been outlined. As well as circumstances that qualify as exceptional for which the Board will grant additional extensions.

D) The Registrar’s Benchmarks for Maximum Extensions of Time

With respect to Statements of Opposition, requests to extend the initial time limit prescribed by the Act are limited to three months with sufficient reasons.  In addition, the Registrar will generally not grant requests for further extensions.

With respect to Counter Statements, requests to extend the initial time limit prescribed by the Regulations are limited to two months with sufficient reasons.  The Registrar will generally not grant requests for further extensions.

With respect to evidence under Rules 41(1) and 42(1) of the Regulations, requests to extend the initial time limit will be limited to three months for applications advertised in the Journal on or after October 1, 2007, and six months for applications advertised in the Journal before October 1, 2007.  Requests to extend a deadline for which an extension of time has already been granted will generally not be granted.

E) Extensions of Time beyond the Benchmark – “Exceptional Circumstances”

A request for an extension of time based on exceptional circumstances must be supported by a full and frank disclosure of all the relevant facts.  It is very unlikely that the Registrar will consider a request favourably if the party relies on substantially the same set of circumstances as those used to support an earlier request.  The extent of information needed in support of the request will increase with every additional request filed.

Here are some examples of what could amount to an exceptional circumstance, depending on the facts of the particular case, the stage of the opposition proceeding, and the diligence with which the parties have advanced the opposition:

• Co-pending opposition between the same parties for related trade-marks;
• Recent change in a party’s instructing principal or trade-mark agent;
• Circumstances beyond the control of the person concerned: examples are illness, accident, death, bankruptcy or other serious and unforeseen circumstances;
• A recent assignment of the trade-mark that is either the subject of the opposition or a trade-mark application or registration being relied upon by the opponent;
• A revised application wherein the revision, if accepted, would put an end to the opposition proceeding or substantially change the nature of the opposition proceeding;
• Finalizing settlement: one further extension beyond the benchmark may be granted if the parties require limited time in order to fully finalize and complete settlement negotiations or mediation.

F)   Extension of Time to Conduct Cross-Examination

Provided that the party conducting a cross-examination has been diligent in complying with the order for cross-examination, the Registrar may consider one or more of the following to be an exceptional circumstance justifying the grant of a further extension of time to comply with a cross-examination order:

• Waiting for the transcript of a recent cross-examination;
• Waiting for answers to undertakings given during a recent cross-examination;
• The need to schedule multiple cross-examinations; or
• The terms of the cross-examination order apply to a recently substituted affidavit or statutory declaration.

G) Scheduling of Oral Hearings

Once the file is ready to be scheduled for an oral hearing, the Registrar will issue a notice to the parties with the time, date, location of the hearing.  The Registrar will generally issue these notices on a quarterly basis with no less than 90 days notice of the hearing date.  The parties will have one month from the date of the Registrar’s note to confirm their attendance at the scheduled hearing.  In cases where the party or parties who had requested to be heard are not available on the specified hearing date and the parties consent to having the hearing rescheduled, the Registration will make arrangements to reschedule the hearing date as soon as administratively possible.  Cases will only be rescheduled once.

H) Hearings on Short Notice

If the parties consent they may file a request in writing, any time after confirming that they wish to be heard at a hearing, to have their case scheduled and heard on short notice.  The request must contain the full contact information for the applicant and opponent, including telephone numbers where the parties can be reached on short notice; a statement that the hearing will not exceed two and one half hours; and a statement that both parties consent to be heard on short notice.  If hearings are cancelled and there is availability, the Registrar will contact the parties by phone to schedule a hearing on short notice in order from the date on which the parties confirmed with the Registrar that they consented to be heard on short notice.  Parties will generally only be given two business days to provide written confirmation by facsimile of their attendance at the hearing.

I) Postponement of Hearing

The Registrar will generally not grant any postponements of scheduled hearing dates on the basis of consent between the parties and/or on the basis of settlement negotiations.  In general, the Registrar will not hold decisions in abeyance or agree not to issue a decision based on consent of the parties and/or pending settlement negotiations.

Conclusion

These new changes, which bring Canadian opposition practice into line with European practice, should significantly speed up the duration of oppositions, and will hopefully promote earlier pursuit of settlement negotiations.

The new notice replaces all previous notices; however, oppositions involving applications advertised prior to October 1, 2007 will be conducted in accordance with the Trade-marks Regulations, as they read on September 30, 2007.

Sangeetha Punniyamoorthy is an associate at Dimock Stratton LLP. Her practice encompasses intellectual property litigation and trade-mark prosecution.