Frequently Asked Questions For Changes Affecting the Procedure Before the Trade-marks Opposition Board on October 1, 2007

1. When did the amended regulations and the Practice Notice entitled, Procedure Before the Trade-marks Opposition Board as of October 1, 2007, (the Practice Notice) come into force?

Amendments to the Trade-marks Regulations dealing with changes to time limits at various steps in opposition proceedings (Rules 39, 41, 42) came into force on October 1, 2007. As a result of the amendments, the Trade-marks Opposition Board has changed its practice, including changes with respect to the granting of extensions of time at various steps in opposition proceedings, which also took effect on October 1, 2007.

According to the transitional provisions of the amended regulations, opposition proceedings relating to an application for the registration of a trade-mark that was advertised in the Trade-marks Journal before October 1, 2007 shall be conducted in accordance with Rules 39, 41 and 42 of the Trade-marks Regulations, previously the Trade-marks Regulations (1996), as they read on September 30, 2007.

2. Does the Practice Notice apply only to applications advertised on or after October 1, 2007?

The Practice Notice applies to all files in opposition and replaces all previous Trade-marks Opposition Board practice notices.

3. Is the period to oppose an application for the registration of a trade-mark that was advertised in the Trade-marks Journal affected by the new regulations?

No, it remains within two months from the date of advertisement.

4. What is the difference between Column A and Column B in the Practice Notice?

Column A refers to applications advertised in the Trade-marks Journal on or after October 1, 2007, and Column B refers to applications advertised in the Trade-marks Journal before October 1, 2007.

5. Under Column B in the Practice Notice are you entitled to both the "Initial Deadline" and the "Extended Deadline" options?

No. The file receives the "Initial Deadline" option if the applicant or opponent, as the case may be, is seeking to extend the time limit prescribed by the Trade-marks Act or the Trade-marks Regulations. The file receives the "Extended Deadline" option if the applicant or opponent, as the case may be, is seeking to extend a deadline for which a non-final extension of time has already been granted prior to October 1, 2007. Under no circumstances will a file receive the "Extended Deadline" option after having already received the "Initial Deadline" option.

6. In Column A and Column B of the Practice Notice what does the plus ("+") sign signify?

The plus ("+") sign signifies that a party may file a separate request for a further extension of time and generally such a request will be granted if it meets the requirements as outlined in the Practice Notice.

7. Will it be possible to obtain a further extension of time once the extension(s) of time expressly provided for by the Practice Notice has(have) been granted?

A further extension of time will only likely be granted if exceptional circumstances are shown, having regard to the interests of third parties. The other party's consent to the request for the extension of time will generally not constitute exceptional circumstances sufficient to justify a further extension of time under section 47 of the Trade-marks Act.

8. Where a file has received the "Extended Deadline" option for filing and serving evidence or a statement pursuant to Rule 41(1) or Rule 42(1) in Column B, can a party requesting an extension of time in view of ongoing settlement negotiations request a two-month extension of time and subsequently request a further four-month extension of time so as to amount to the six-month extension of time provided for in the Practice Notice?

A. No. The party may only file one request for an extension of time for a period of up to six months in view of ongoing settlement negotiations and with the other party's consent. Parties should not file multiple requests for extensions of time so as to amount to the six-month extension of time provided for in the Practice Notice. If a party limits its request for an extension of time for a period of less than six months in view of ongoing settlement negotiations and with the other party's consent, a further extension of time will likely only be granted if exceptional circumstances are shown, having regard to the interests of third parties. The other party's consent to the request will generally not constitute exceptional circumstances sufficient to justify a further extension of time under section 47 of the Trade-marks Act. This practice applies regardless of whether the initial request for the extension of time was made in view of ongoing settlement negotiations or not.

9. Does the new practice of automatically reducing the four-month extension of time to a two-month extension of time for filing and serving evidence or a statement pursuant to Rule 42(1) affect all cross-examination orders if the applicant is in default of completing the cross-examination?

No, it only affects orders issued on or after October 1, 2007.

10. Does the new practice of automatically reducing the four-month extension of time to a two-month extension of time for filing and serving evidence pursuant to Rule 43 affect all cross-examination orders if the opponent is in default of completing the cross-examination?

No, it only affects orders issued on or after October 1, 2007.

11. Where the cross-examination order specifies that the applicant has four months for filing and serving evidence or a statement pursuant to Rule 42(1), is it possible to apply for a further extension of time of such deadline?

Yes, it is possible to request a further extension of time of two months with sufficient reason(s) and the other party's consent or if exceptional circumstances are shown. Alternatively, a further extension of time of six months in view of ongoing settlement negotiations and with the other party's consent can be requested. This practice applies regardless of whether the applicant has been granted a four-month extension of time or the reduced two-month extension of time.

12. Where the cross-examination order specifies that the opponent has four months for filing and serving evidence pursuant to Rule 43, is it possible to apply for a further extension of time of such deadline?

Yes, it is possible to request a further extension of time of two months with sufficient reason(s) and the other party's consent or if exceptional circumstances are shown. This practice applies regardless of whether the opponent has been granted an extension of time of four months or the reduced two-month extension of time.

13. Where is it possible to get more information?

Read the amended regulations on the Canada Gazette II website. You can also view the Practice Notice on CIPO's website or contact us.