On December 1, 2023, the Trademarks Opposition Board (TMOB) will implement changes regarding the Practice in trademark opposition proceedings and the Practice in section 45 proceedings.
The majority of the changes will significantly shorten the period of time for completing cross-examination and the extension period available for various steps in opposition or section 45 proceedings:
- Extension of time to file a Statement of Opposition is reduced from four months to two months;
- Extension of time to file a Counterstatement is reduced from two months to one month;
- Extension of time for either party to submit evidence, reduced from three months to two months;
- Extension of time to submit Opponent's reply evidence is reduced from four months to one month.
- Extension of time for filing Written Representations is reduced from two months to one month.
- Requests for cooling off period to allow the parties to conduct settlement discussions will be reduced from 9 months to 7 months;
- Period of time to complete a cross-examination will be reduced from four months to two months.
Under the new Practice Notice in section 45 proceedings, the extension of time available for the owner of a registration to serve and file evidence of use will be reduced from four months to two months.
For both opposition and section 45 proceedings, a new requirement to "act promptly and diligently" has been introduced to obtain an extension based on exceptional circumstances. The party unable to meet the deadline will have to demonstrate "a consistent overall pattern of reasonable effort, promptness and diligence in their efforts to meet the upcoming deadline". Example of situations that TMOB considers as qualifying as exceptional circumstances are: an inadvertent error or omission by a party or agent; inherently lengthy process of evidence preparation; unavailability of relevant deponents due to involvement in other matters, if the party has exhausted all efforts to find alternative deponents.
These changes are meant to reinforce TMOB's efforts to improve the timelines for obtaining a hearing date or a non-hearing decision. Trademark owners and their agents will have to work diligently to ensure that all steps are completed within the new timeframes.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.