Changes to Trademark Opposition and Section 45 Proceedings - Method Law Professional Corporation Toronto

Overview

As of December 1, 2023, the Trademarks Opposition Board (TMOB) implemented changes to the Practice in trademark opposition proceedings and the Practice in section 45 proceedings. The durations granted for extensions of time, cooling off periods, and cross-examination periods will be significantly reduced. The TMOB believes that these changes will quicken the overall process for trademark opposition and section 45 expungement proceedings.

The Changes to the Extensions Available and Deadlines in Trademark Opposition Proceedings

A chart summarizing the upcoming changes is below:

Section	Implemented Changes
Extensions of time after statutory or administrative deadline	Maximum benchmark extensions of time decreased: Statement of opposition: 4 to 2 months Counter statement: 2 to 1 month Opponent’s evidence: 3 to 2 months with consent Applicant’s evidence: 3 to 2 months with consent Evidence where cross-examination requested + completed: 4 to 2 months Evidence where cross-examination requested + not completed: 2 to 1 month Reply evidence: 4 to 1 month with consent Opponent’s written representations: 2 to 1 month Applicant’s written representations: 2 to 1 month
Extensions of time – cooling off period	Maximum extension of time decreased from 9 months to 7 months per party
Inability to meet an upcoming deadline despite acting diligently	New – extensions of time may be granted at the discretion of the Registrar to parties that have made reasonable efforts to comply with the requirements of the Act

The Changes to the Extensions Available in Section 45 Proceedings

The changes in section 45 proceedings are similar to those described above.

A chart summarizing the upcoming changes is below:

Section	Implemented Changes
Extensions of time	Benchmarks for extensions of time decreased from 4 months to 2 months
Inability to meet an upcoming deadline despite acting diligently	New – extensions of time may be granted at the discretion of the Registrar to parties that have made reasonable efforts to comply with the requirements of the Act

Conclusion

These changes took effect on December 1, 2023. Those who have, or expect to have granted extension requests, cross-examination orders issued, or other deadlines fixed prior to this date will not be impacted.

To view the changes to the Practice in trademark opposition proceedings, click here

To view the changes to the Practice in section 45 proceedings, click here

This article is provided for informational purposes only and is not legal advice. For further information or assistance in filing a trademark application or a request for expedited examination, please contact us by phone (416) 847-0054 or by email at mail@methodlaw.ca.