Canada’s Trademark Opposition Practice Changing Again?

In case you missed it: the Canadian Intellectual Property Office has commenced a public consultation session concerning possible changes in practice before the Trademark Opposition Board.

These proposed changes follow on the heels of – and are likely motivated by – changes introduced to Opposition Board practice last fall. Many practitioners were surprised by those changes, and found frustration in some of the ambiguities contained in that Practice Notice, issued nearly a year ago.

The newly proposed Notice appears designed to remedy these problems: it provides greater clarity with respect to the number of available extensions and the possible duration thereof, and offers extensive guidance concerning the nature of the “exceptional circumstances” required to obtain an extension at certain stages of a proceeding.

In addition, the Notice also proposes the introduction of a “cooling-off period” to allow the parties to pursue settlement negotiations. Such periods are already commonplace in the UK, in the Benelux system and in the Community Trademark System.

Finally, the Notice proposes a new practice with respect to the scheduling of hearings.

CIPO is seeking comments on the proposed changes: the consultation period runs to October 24, 2008.

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About the Blog

The authors of the Canadian Trademark Blog are all members of the Canadian law firm Clark Wilson LLP, based in Vancouver, Canada. Each author's practice focuses–either in whole or in substantial part–on Canadian intellectual property law. Together, they manage the trade-mark portfolios of local, national and international brand owners in nearly all industries and markets.

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