Changes To Trademark Opposition And Summary Cancellation Proceedings Coming On December 1

Changes are coming on December 1, 2023, to contentious trademark proceedings before the Canadian Intellectual Property Office (CIPO).  The changes will shorten timelines for oppositions and summary cancellation (s. 45) proceedings.

The primary changes will be to reduce the current benchmarks for extensions of time and the cooling off period and to make it harder to obtain further extensions of time.  Deadlines already fixed and extension requests already made prior to December 1st, 2023, will not be affected by these changes.

Oppositions

Extensions of time to file a statement of opposition will drop from 4 months to 2 months.  The corresponding extension of time to file a counterstatement will reduce from 2 months to 1.  Consent extensions of time to file primary evidence will drop from 3 to 2.  Extensions of time for an applicant in an opposition to file reply evidence will also drop from 4 months to 1.

The period to conduct a cross-examination in an opposition will decrease from four months to two.

Reductions are also in store for extensions of time to file written arguments.

Significantly, the maximum amount of time allowed for “cooling off” to allow for settlement discussions on consent, will drop from an extension by each party of nine months (for a total of 18 months) to seven months each (for a total of 14 months).

Summary Cancellation (s. 45) Proceedings

The as-of-right extension of time for the registrant to file evidence in response to s. 45 proceedings will drop from four months to two (beyond the baseline 3-month deadline to file evidence).

Extraordinary Circumstances

In both cases, it will become more difficult to obtain extensions of time based on “extraordinary circumstances”.  Parties requesting such extensions will have to provide an explanation as to why it will not be possible to meet the upcoming deadline at issue; and describe what actions were taken prior to the upcoming deadline to meet it.

CIPO has recently improved the timelines for obtaining a hearing date and non-hearing decision, and the intended effect of these upcoming changes will be to shorten the time contentious trademark proceedings before CIPO will take from start to finish.

Details on the upcoming changes can be found here:

• Changes to the Practice in trademark opposition proceedings
• Changes to the Practice in section 45 proceedings

Summary By: Gary Daniel and Michelle Noonan