GATINEAU, QUEBEC - The Canadian Intellectual Property Office (CIPO) announced in a press release that on October 1, 2007, important regulatory amendments to the Trademark Regulations and a new practice affecting the procedure before the Trademarks Opposition Board came into force.

These amendments are in keeping with the principles of the Government of Canada's initiative on Smart Regulation and the Paperwork Burden Reduction Initiative (PBRI). The amended regulations will help ensure an efficient process by allowing parties more time during opposition to prepare and file their documents without the administrative burden and cost for requesting additional extensions of time.

The regulatory amendments affect Rules 39, 41 and 42 of the Trade-mark Regulations insofar as they relate to a trade-mark application advertised in the Trade-marks Journal on or after October 1, 2007 and are as follows:

• The prescribed time limit for filing and serving a counter statement pursuant to Rule 39 of the Regulations has been increased to two months;

• The prescribed time limit for filing and serving opponent's evidence or statement pursuant to Rule 41 of the Regulations has been increased to four months; and

• The prescribed time limit for filing and serving applicant's evidence or a statement pursuant to Rule 42 of the Regulations has been increased to four months.

For opposition proceedings relating to an application for the registration of a trademark that was advertised in the Trademarks Journal before October 1, 2007, the opposition shall be conducted in accordance with Rule 39, 41 and 42 of the Regulations, previously the Trademark Regulations (1996), as they read on September 30, 2007. This means that:

• The prescribed time limit for filing and serving a counter statement under Rule 39 of the Regulations is one month;

• The prescribed time limit for filing and serving opponent's evidence or a statement pursuant to Rule 41 of the Regulations is one month; and

• The prescribed time limit for filing and serving applicant's evidence or a statement pursuant to Rule 42 of the Regulations is one month.
Amendments to the Regulations with respect to objection proceedings under Section 11.13 of the Trademarks Act also come into force on October 1, 2007. To view them, please visit the Canada Gazette II website.

The new practice notice replaces previously published practice notices. It is important to take into account the date of advertisement of the trademark application being opposed, particularly in the case of requests for extensions of time at various steps in the opposition proceedings. A request for an extension of time at a particular stage of an opposition will be considered according to whether the opposition proceedings concern a trademark application advertised in the Trademarks Journal on or after October 1, 2007, or before October 1, 2007.

For opposition proceedings relating to a trademark application advertised in the Trademarks Journal before October 1, 2007, a request for an extension of time will be considered according to whether the applicant or opponent, as the case may be, is seeking to extend the initial time limit prescribed by the Trademarks Act or the Trademarks Regulations or is seeking to extend a deadline for which a non-final extension of time has already been granted.

Once extensions of time have been granted according to the new practice, a request for a further extension of time will only likely be granted if exceptional circumstances are shown.
For detailed information about the practice, including questions and answers, please visit CIPO's website at: www.cipo.gc.ca/TMOBchanges

Source: ag-IP news