IP NEWS

New Trademark Opposition Board Procedures

07/04/2009

The Canadian Intellectual Property Office has recently published a new practice notice entitled “Practice in Trademark Opposition Proceedings” which, effective March 31, 2009, introduces a number of changes to opposition proceedings in Canada. The changes are designed to streamline the opposition process, allowing oral hearings to be held in a much shorter period of time. Parties will now be able to mutually request their cases be heard on short notice. Postponements of hearings will generally no longer be available, and hearings generally can be rescheduled only once.

One significant change to the opposition procedure is the introduction of a “cooling off” period, which allows the Registrar to grant each party one extension of up to nine months, on consent of the other party, in order to encourage settlement. Aside from this “cooling off” period, additional extensions will generally only be available in accordance with benchmarks established within the practice notice. Extensions of time may be available in exceptional circumstances, examples of which are provided in the practice notice [including changes in a party’s instructing principal or agent; circumstances beyond the control of the person involved; a recent assignment of the trademark that is either the subject of the opposition or a trademark application or registration being relied upon by the opponent; a revised application, the acceptance of which would put an end to the opposition proceedings; and finalizing settlement]. Be aware, however, that ongoing settlement negotiations generally may not constitute exceptional circumstances.

A copy of the new practice notice is available on the CIPO website.

This article is for information purposes only and does not constitute legal or professional advice.

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