Frequently Asked Questions

The New Practice Notice in Opposition in effect as of March 31, 2009.

  1. How does the new Practice Notice affect trademark opposition proceedings that were pending and commenced prior to March 31, 2009, the date upon which the new notice came into effect?
  2. If a party requests and is granted an extension of time of six months amounting to a cooling-off period, can that same party later request a further three month extension of time amounting to a cooling-off period because the total maximum benchmark is nine months?
  3. Is there a fee associated with a request for a cooling-off period?
  4. If a party was already granted one extension of time up to the maximum benchmark of four months to conduct its cross-examination under the previous Practice Notice, can that party now obtain a further extension of time up to the maximum benchmark of four months under the new Practice Notice ?
  5. Can a party request an extension of time amounting to a cooling-off period to extend the deadline to conduct its cross-examination(s)?
  6. Will it be possible to obtain a further extension of time once the extensions of time expressly provided for by the Practice Notice as the maximum respective benchmarks have been granted?
  7. In filing a request to be heard under Rule 46 of the Trade-marks Regulations, do the parties have to agree or file a joint submission providing the Board with an indication of the duration required and reasons why the hearing of their case will require longer than two and one half hours?
  8. In accordance with Rule 46(1) of the Trade-marks Regulations, the Registrar issues a notice following the completion of evidence giving the parties one month to file their written arguments. Can this deadline be extended without consent from the other party?
  9. What is the Registrar's practice with respect to non-payment of fees?
  10. Can an opponent request an extension of time up to the maximum benchmark of three months for filing its statement of opposition both prior to and after seeking an extension of time up to the maximum benchmark of nine months on consent, amounting to a cooling-off period? In other words, will the Registrar generally grant an opponent up to 3 months + 9 months + 3 months for filing a statement of opposition?
  11. What happens if the Registrar denies my request for an extension of time? In refusing my request, will the Registrar give me any additional time to meet my deadline?
  12. What can I do to avoid the consequences of s. 38(7.1) and s. 38(7.2) of the Trade-marks Act when requesting an extension of time on the basis of exceptional circumstances for filing a counter statement or complying with Rule 41 or Rule 42 of the Trade-marks Regulations?
  13. Does the filing of a statement that the opponent/applicant does not wish to submit evidence pursuant to Rule 41/Rule 42 of the Trade-marks Regulations prevent the opponent/applicant to file any evidence in the opposition proceedings?
  14. Can an opponent request an extension of time amounting to a cooling-off period for filing and serving evidence pursuant to Rule 43 of the Trade-marks Regulations?
  15. Under the Practice Notice, does a party's deadline to file evidence run from the deadline set by the Registrar to conduct its cross-examination?
  16. Does the opponent require the consent of the applicant to obtain an extension of time to file and serve its evidence pursuant to Rule 43 of the Trade-marks Regulations if the extension of time is requested at the time of requesting an order for the cross-examination of the applicant's deponent(s)?
  17. 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) of the Trade-marks Regulations, is it possible for the applicant to request a further extension of time of this deadline?
  18. Where the cross-examination order specifies that the opponent has four months for filing and serving its evidence pursuant to Rule 43 of the Trade-marks Regulations, is it possible to apply for a further extension of time of this deadline?
  19. Where is it possible to get more information?

  1. How does the new Practice Notice affect trademark opposition proceedings that were pending and commenced prior to March 31, 2009, the date upon which the new notice came into effect?

    As of March 31, 2009, the new Practice Notice entitled Practice in Trademark Opposition Proceedings applies to all files in opposition and replaces the previous Trademarks Opposition Board practice notice. Accordingly, all correspondence and documents filed with the Registrar on or after March 31, 2009 will be treated under the new practice notice. However, all correspondence and documents filed with the Registrar before March 31, 2009 will be treated under the previous practice notice entitled, Procedure before the Trademarks Opposition Board as of October 1, 2007, even in cases where the Registrar has not treated or responded to that correspondence or those documents prior to March 31, 2009.

  2. If a party requests and is granted an extension of time of six months amounting to a cooling-off period, can that same party later request a further three month extension of time amounting to a cooling-off period because the total maximum benchmark is nine months?

    No. The Registrar will only consider one request for an extension of time up to the maximum benchmark of nine months, even where such multiple requests for extensions of time would amount to the total maximum benchmark.

  3. Is there a fee associated with a request for a cooling-off period?

    Yes, this is a request for an extension of time under s. 47(1) of the Trade-marks Act, which extension of time is considered to amount to a cooling-off period allowing the parties to negotiate and/or mediate the opposition.

  4. If a party was already granted one extension of time up to the maximum benchmark of four months to conduct its cross-examination under the previous Practice Notice, can that party now obtain a further extension of time up to the maximum benchmark of four months under the new Practice Notice?

    No. The practice with respect to the Registrar granting an applicant/opponent up to a four month extension of time to complete cross-examinations has not changed. Accordingly, in cases where the Registrar granted the applicant/opponent an extension of time within which to complete its cross-examination under the previous practice notice, the Registrar will not grant the applicant/opponent a further four month extension of time under IX.1 and V.1 of the new Practice Notice.

  5. Can a party request an extension of time amounting to a cooling-off period to extend the deadline to conduct its cross-examination(s)?

    No. An extension of time amounting to a cooling-off period is an extension of time granted under s. 47(1) of the Trade-marks Act. Since the deadline to conduct cross-examination(s) is an administrative deadline fixed by the Registrar, the provisions of s. 47 of the Trade-marks Act do not apply.

  6. Will it be possible to obtain a further extension of time once the extensions of time expressly provided for by the Practice Notice as the maximum respective benchmarks have been granted?

    A further extension of time beyond the maximum benchmark (see V.1.2 of the Practice Notice) will only likely be granted if exceptional circumstances are shown. 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 s. 47 of the Trade-marks Act.

  7. In filing a request to be heard under Rule 46 of the Trade-marks Regulations, do the parties have to agree or file a joint submission providing the Board with an indication of the duration required and reasons why the hearing of their case will require longer than two and one half hours?

    No. Each party who wishes to be heard at a hearing, in accordance with Rule 46, must request to be heard and include the necessary information for the Registrar to properly schedule the requested hearing. Each party must inform the Registrar if it anticipates either that:

    • the parties may exceed the total hearing time of two and one half hours; or
    • the party may exceed the total time of one hour which is generally granted to a party to make representations with the opponent being granted an additional one half hour for reply.
  8. In accordance with Rule 46(1) of the Trade-marks Regulations, the Registrar issues a notice following the completion of evidence giving the parties one month to file their written arguments. Can this deadline be extended without consent from the other party?

    The Registrar will generally only grant a party an extension of time up to the maximum benchmark of four months on consent for filing its written argument (see V.1 of the Practice Notice). If a party cannot obtain consent from the other party or if consent is being unreasonably withheld, a party may request an extension of time on the basis of exceptional circumstances for filing its written argument (see V.3. of the Practice Notice).

  9. What is the Registrar's practice with respect to non-payment of fees?

    All requests for extensions of time under s. 47 of the Trade-marks Act and statements of opposition must be accompanied by payment in full of the respective prescribed fees (see the Tariff of Fees). Requests for extensions of time and statements of opposition filed without payment in full of the prescribed fee will not be treated and the party will be so advised. The Registrar will not grant parties a three week administrative delay within which to pay the prescribed fees. See also the practice notice entitled, Payment of fees: general authorizations to charge deficiencies to deposit accounts and credit cards .

  10. Can an opponent request an extension of time up to the maximum benchmark of three months for filing its statement of opposition both prior to and after seeking an extension of time up to the maximum benchmark of nine months on consent, amounting to a cooling-off period? In other words, will the Registrar generally grant an opponent up to 3 months + 9 months + 3 months for filing a statement of opposition?

    No. An opponent may request only one extension of time up to the maximum benchmark of three months either to extend the initial time limit fixed by s. 38(1) of the Trade-marks Act for filing a statement of opposition or alternatively to further extend an extension of time already granted up to the maximum benchmark of nine months on consent, amounting to a cooling-off period. In other words, for filing a statement of opposition, the Registrar will generally grant an opponent up to:

    • 3 months + 9 months (consent); OR
    • 9 months (consent) + 3 months.
  11. What happens if the Registrar denies my request for an extension of time? In refusing my request, will the Registrar give me any additional time to meet my deadline?

    If an extension of time is refused, the Registrar will not grant the requesting party any additional time for the party to meet its deadline and comply with the requirements of the Trade-marks Act or Trade-marks Regulations. Please note the serious consequences in the Trade-marks Act for a party's failure to meet its deadlines in some cases. For example, if the Registrar denies an opponent an extension of time for filing its evidence, and the opponent has not filed a statement that it does not wish to file any evidence, the opponent will have failed to comply with Rule 41 of the Trade-marks Regulations. Accordingly, the opponent will be notified upon denial of the extension request that the opposition will be treated as abandoned under s. 38(7.1) of the Trade-marks Act.

  12. What can I do to avoid the consequences of s. 38(7.1) and s. 38(7.2) of the Trade-marks Act when requesting an extension of time on the basis of exceptional circumstances for filing a counter statement or complying with Rule 41 or Rule 42 of the Trade-marks Regulations?

    When filing a request for a further extension of time under exceptional circumstances:

    • An applicant may in the alternative request that its letter be considered as its counter statement denying each and every allegation in the statement of opposition and confirm service of its letter on the other party, thus avoiding the application being deemed to be abandoned under s. 38(7.2) Trade-marks Act.
    • An opponent may in the alternative request that its letter be considered as its statement that it does not wish to submit evidence pursuant to Rule 41 of the Trade-marks Regulations, thus avoiding the opposition being deemed to be withdrawn under s. 38(7.1) of the Trade-marks Act.
    • An applicant may in the alternative request that its letter be considered as its statement that it does not wish to submit evidence pursuant to Rule 42 of the Trade-marks Regulations, thus avoiding the application being deemed to be abandoned under s. 38(7.2) Trade-marks Act.
  13. Does the filing of a statement that the opponent/applicant does not wish to submit evidence pursuant to Rule 41/Rule 42 of the Trade-marks Regulations prevent the opponent/applicant to file any evidence in the opposition proceedings?

    No. The filing of such statement does not prevent the opponent/applicant to subsequently request leave to file further evidence pursuant to Rule 44(1) of the Trade-marks Regulations, although such a request will only be granted if the Registrar is satisfied that it is in the interests of justice to do so having regard to all the surrounding circumstances (see VII of the Practice Notice).

  14. Can an opponent request an extension of time amounting to a cooling-off period for filing and serving evidence pursuant to Rule 43 of the Trade-marks Regulations?

    No. The Registrar considers that the practice of granting each party one extension of time up to a maximum benchmark of nine months, on consent, amounting to the possibility of an eighteen month cooling-off period, as further detailed under V.1.1 of the Practice Notice, should provide most parties with a reasonable period of time in which to pursue and finalize settlement of the opposition at the early stage of the proceedings.

  15. Under the Practice Notice, does a party's deadline to file evidence run from the deadline set by the Registrar to conduct its cross-examination?

    A request for an order for cross-examination has no effect on a party's prescribed deadline for filing and serving its evidence or statement under Rule 42 or Rule 43 of the Trade-marks Regulations, unless the party also specifically requests an extension of time under s. 47 of the Trade-marks Act to comply with Rule 42 or Rule 43. Upon such a request for an extension of time for filing and serving evidence, as further detailed under IX of the Practice Notice, the Registrar will generally grant a party four months from the completion of the cross-examination for that party to file its evidence.

  16. Does the opponent require the consent of the applicant to obtain an extension of time to file and serve its evidence pursuant to Rule 43 of the Trade-marks Regulations if the extension of time is requested at the time of requesting an order for the cross-examination of the applicant's deponent(s)?

    No. However, the opponent must specifically request an extension of time under s. 47 of the Trade-marks Act to file and serve its evidence under Rule 43, in view of its request for the issuance of a cross-examination order, as further detailed under IX of the Practice Notice.

  17. 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) of the Trade-marks Regulations, is it possible for the applicant to request a further extension of time of this deadline?

    No, except in cases where the applicant may request an extension of time up to the maximum benchmark of nine months on consent, amounting to a cooling-off period (see V.1.1.2 of the Practice Notice) or a further extension of time on the basis of exceptional circumstances.

    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), the Registrar will not generally grant the applicant a further extension of time up to the benchmark of either three months (for marks advertised on or after October 1, 2007) or six months (for marks advertised before October 1, 2007) (see V.1.2 of the Practice Notice). 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.

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

    The Registrar will not generally grant the opponent a further extension of time up to the benchmark of four months (see V.1.2 of the Practice Notice), but the opponent could request a further extension of time on the basis of exceptional circumstances. 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.

  19. Where is it possible to get more information?

    Please read the Practice Notice on CIPO's website or, call the Trademarks Opposition Board:

    • directly at 819-997-7300 or
    • by calling the Canadian Intellectual Property Office toll-free at 1-866-997-1936 and asking that your call be transferred to the Trademarks Opposition Board.