Upcoming Changes to Extension Periods in Trademark Opposition and Section 45 Proceedings in Canada
Effective December 1, 2023, significant changes are coming to the Canadian Trademark Opposition Board’s handling of opposition and Section 45 non-use cancellation proceedings. These changes aim to streamline the process and reduce the overall time taken for resolutions. Here’s what you need to know:
Reduced Extension Times
- From December 1, 2023, extension periods will be cut by up to 50%. To benefit from the current longer extension periods, requests must be filed before this date.
- The reduction in extension times means parties will have less time to prepare for each step in the proceedings, requiring more efficient preparation and strategy.
Background and Goals
- The objective behind these changes is for Canada to become a preferred jurisdiction for resolving trademark disputes.
- The Trademark Opposition Board, now bolstered with experienced experts, is shifting focus towards efficient turnaround times.
- A recent customer satisfaction survey indicated frustration with the long wait times for hearings and the overall duration of proceedings.
- Over the past three years, efforts have been made to reduce the backlog of hearings, with some oral hearings now being scheduled just one to two months after the initial request.
Introduction of “Exceptional Circumstances” Extension
- Alongside reduced extension terms, a new extension for “exceptional circumstances” is being introduced.
- This new category covers situations where a deadline cannot be met despite due diligence.
- Requests under this category must detail why the deadline is unattainable, past actions taken, and a plan for meeting the deadline. However, this will not apply to settlement negotiations.
Specific Changes in Proceedings
- For Section 45 proceedings: The benchmark extension for registered owners to file evidence will be two months instead of the current four months.
- For Opposition proceedings: Extension times will generally be reduced. However, the first extension to oppose a Madrid Designation will remain at four months after December 1, 2023.
These changes underscore the importance of timely and efficient handling of opposition and Section 45 proceedings. Parties involved in such cases should prepare for quicker timelines and be ready to adapt to the new extension criteria.
For more information please visit the Canadian Intellectual Property Office’s website here.