Proposed Practice Notice - Opposition Deemed Withdrawn, Application Deemed Abandoned

Publication Date: xxxx-xx-xx

Opposition Deemed Withdrawn

Subsection 38(7.1) of the Trade-marks Act (the “Act”) provides that the opposition to an application for the registration of a trade-mark shall be deemed to have been withdrawn if, in the prescribed circumstances, the opponent does not submit either evidence under subsection (7) or a statement that the opponent does not wish to submit evidence.

The Registrar will issue a notice to the opponent confirming that the opposition is deemed to have been withdrawn in cases where the opponent does not either submit evidence or a statement that the opponent does not wish to submit evidence in the prescribed circumstances.

The Registrar will no longer first issue a notice indicating that the opposition will be treated as withdrawn, prior to issuing the notice confirming that the opposition is deemed to have been withdrawn.

The Registrar considers that there is no authority to grant a retroactive extension of time under subsection 47(2) of the Act after an opposition is deemed to have been withdrawn under subsection 38(7.1) of the Act

Application Deemed Abandoned

Application Deemed Abandoned in Opposition

Subsection 38(7.2) of the Act provides that the application for registration of a trade-mark shall be deemed to have been abandoned if the applicant does not file and serve a counter statement within the time referred to in subsection (6) or if, in the prescribed circumstances, the applicant does not submit either evidence under subsection (7) or a statement that the applicant does not wish to submit evidence.

The Registrar will issue a notice to the applicant confirming that the application is deemed to have been abandoned in cases where the applicant does not file and serve a counter statement within the prescribed time or if in the prescribed circumstances, the applicant does not submit either evidence under subsection (7) or a statement that the applicant does not wish to submit evidence.

The Registrar will no longer first issue a notice indicating that the application will be treated as abandoned, prior to issuing the notice of abandonment.

The Registrar considers that there is no authority to grant a retroactive extension of time under subsection 47(2) of the Act after an application has been deemed to have been abandoned under subsection 38(7.2) of the Act.

Application Deemed Abandoned – failure to file a Declaration of Use

Subsection 40(3) of the Act provides that an application for registration of a proposed trade-mark shall be deemed to be abandoned if a Declaration of Use is not received by the Registrar before the later of six months from the date of the Notice of Allowance or three years from the date of filing the application in Canada.

Upon the expiration of the initial deadline to file a Declaration of Use provided in the Notice of Allowance, the Registrar will issue a notice to the applicant confirming that the application for registration of a proposed trade-mark is deemed to be abandoned in cases where the applicant does not submit a Declaration of Use or request an extension of time before the expiry of the deadline set in the notice.

The Registrar considers that there is no authority to grant a retroactive extension of time under subsection 47(2) of the Act after an application has been deemed to have been abandoned under subsection 40(3) of the Act.

Note: This practice notice is intended to provide guidance on current Trade-marks Office practice and interpretation of relevant legislation. However, in the event of any inconsistency between this notice and the applicable legislation, the legislation must be followed.