On December 1, 2023, the Trademarks Opposition Board (TMOB) will be implementing changes to two of its practice notices: (1) Practice in trademark opposition proceedings; and (2) Practice in section 45 proceedings.
By shortening the timelines in trademark opposition and summary expungement proceedings, the changes are intended to promote timeliness and efficiency. In particular, the TMOB intends to reduce the current benchmarks for extensions of time and the cooling off period after the initial statutory extensions.
While already fixed deadlines and previously submitted extension requests will be unaffected, requests received on or after December 1 will be subject to the new schedules.
Changes to Opposition Proceedings
The amended timelines with respect to various stages of an opposition beyond the initial statutory deadlines are outlined below. Notably, the maximum amount of time permitted for “cooling off” (to allow for settlement discussions) will decrease from 9 months to 7 months.
- Statement of Opposition: extensions to file a statement of opposition will decrease from 4 months to 2 months.
- Counterstatement: the corresponding extension to file a counterstatement will be 1 month instead of 2 months.
- Filing Evidence with Other Party’s Consent: extensions of time to file primary evidence will drop from 3 months to 2 months.
- Reply Evidence: extensions of time for an applicant to file reply evidence will drop from 4 months to 1 month.
- Cross-Examination: the period to conduct a cross-examination will be 2 months instead of 4 months.
- Written Representations: opponents and applicants will only have an extension of 1 month (with the other party’s consent) to submit written representations as opposed to the previously allocated 2 months.
Changes to Summary Cancellation Proceedings
Under s. 45 of the Trademarks Act, a trademark registration may be expunged from the Register if the owner is unable to show use of the trademark in Canada during the three-year period preceding the s. 45 notice, and there are no special circumstances justifying the non-use.
The upcoming changes to s. 45 proceedings compress the time a registrant has to demonstrate use (or provide adequate reasons explaining the lack of use). Under the new practice notice, owners will only have a maximum of 2 months (in addition to the baseline 3-month deadline to file evidence) instead of the previously allotted 4-month benchmark.
For both opposition and s. 45 proceedings, the TMOB has also introduced an “acting diligently” requirement to obtain an extension based on “extraordinary circumstances”. The party must ultimately demonstrate a “consistent overall pattern of reasonable effort, promptness, and diligence” in their efforts to meet the upcoming deadline. Requests must explain why meeting the deadline is not possible and set out the actions taken prior to the deadline to meet it.
The following examples are recognized by the TMOB as exceptional circumstances: an inadvertent error or omission by a party or agent; inherently lengthy process of evidence preparation; and unavailability of relevant deponents due to involvement in other matters, if the party has exhausted all efforts to find alternative deponents. Importantly, delay resulting from ongoing settlement negotiations (e.g., due to negotiating terms or drafting agreements) will not assist the party in showing they acted diligently.
The new changes mean that brand owners will have to act more promptly in all stages of opposition and cancellation proceedings. Those interested in preserving longer extensions of time should file such requests before the December 1, 2023 effective date.
For further information concerning the changes, please contact any member of our Intellectual Property Group.
The authors would like to thank Emily Groper, Articling Student-At-Law, for her assistance in writing this Update.
Intellectual PropertyAs reported by Gizmodo, Sony has reportedly filed a patent application for a PlayStation 5 (“PS5”) controller that can house and charge wireless earbuds. The patent application reveals several…
Intellectual PropertySince the National Collegiate Athletic Association’s (“NCAA”) 2021 decision, student athletes can monetize their name, image and likeness (“NIL”). NIL agreements, which are subject to contract law…
Intellectual PropertyAs reported by Reuters, Canadian authorities have reportedly announced new restrictions on research grants, with the goal of blocking funding to projects with researchers affiliated with institutions…
Intellectual PropertyAs of January 1, 2024, the Canadian Intellectual Property Office (CIPO) will be increasing most of its fees by 25%. Filing fees, renewal fees, opposition filing fees, as well as fees for initiating…
Intellectual PropertyVancouver-based underwear company, SAXX, has announced that it has settled its lawsuit against Stateside Merchants, according to BIV. As a part of the settlement, Stateside Merchants will reportedly…
Intellectual PropertyAs reported by CBC News, Hitman Two Productions Inc. is reportedly suing over 1,900 Canadians for copyright infringement for allegedly downloading and distributing the movie Hitman’s Wife’s…
Mergers and AcquisitionsGoodmans LLP acted for Docebo Inc. (“Docebo”) in its acquisition of Edugo.AI (“Edugo”), a Generative AI-based Learning Technology that uses advanced Large Language Models and algorithms to optimize…
Mergers and AcquisitionsGoodmans LLP acted for Brookfield Infrastructure in connection with the sale of 100% of its North American district energy business, Enwave…
Mergers and AcquisitionsGoodmans acted for Clairvest Group Inc., together with Clairvest Equity Partners VI , in connection with the acquisition of the solar operations and maintenance business of SunPower Corporation…
Mergers and AcquisitionsGoodmans LLP acted for Ideal, a leading talent intelligence software provider based in Toronto, Ontario in connection with its acquisition by Ceridian…
Mergers and AcquisitionsGoodmans LLP acted for NovaSource Power Services in connection with its merger with Sunsystem Technology. The merger was effective Jan 26, 2021 and the companies will bring together operations in the…
Mergers and AcquisitionsGoodmans LLP acted for AlsoEnergy, a leader in renewable energy software solutions, in its merger with Locus Energy, a solar monitoring and data analytics provider delivering solutions across the…
News & Events
Dispute ResolutionWe are delighted to announce the Lexpert Special Edition: Litigation 2023 once again features Goodmans partners among Canada's experts in litigation.Congratulations to our 13 featured…
Banking and Financial ServicesWe are pleased to share Goodmans lawyers have been recognized across Who's Who Legal's National Guide: Canada 2023. WWL National Guides identify national or regional leaders in a sector, industry…
Banking and Financial ServicesWe are pleased to announce Goodmans LLP has once again received top tier recognition from The Legal 500 Canada in their 2024 Guide released today. Recognition from The Legal 500 is based on…