Section 45 Proceeding Practices to Change Again?

The Canadian Intellectual Property Office has announced that it will soon open a public consultation period relating to proposed changes to Section 45 proceedings.  The Office advises its goal is to modernize and streamline the Registrar’s practice; what precisely this means, however, is not yet known.

Nonetheless, a few details have emerged: the anticipated changes will include a new practice of issuing, in limited cases, final decisions directly following the filing of evidence; changes are also expected to the Registrar’s practice concerning the granting of extensions of time.

We’ll provide a detailed discussion of the possible changes once the proposed practice notice is made available.

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2 Responses

  1. Meg Langley Grainger says:

    The deletion of the phrase “the Registrar may terminate the proceedings upon receipt of a request to cancel the Section 45 proceedings signed by or on behalf of both parties” in the new Practice Notice may require a change in strategy when counseling clients on the use of a Section 45 proceeding as leverage in an opposition proceeding.

    If parties can no longer settle and stop a Section 45 proceeding, they may be reluctant to request one in the first place.

  2. Jeffrey Vicq says:

    I saw that – I’ve always wondered if cancellation of the proceedings on consent was arguably outside of the scope of the authority provided the Registrar under s. 45; perhaps the Office has come to the same conclusion. We’ll have to wait and see what they do with the final version of the new Notice.

    Thanks for reading, Megan. All the best.

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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