{"id":6544,"date":"2023-12-11T15:13:05","date_gmt":"2023-12-11T20:13:05","guid":{"rendered":"https:\/\/www.millerthomson.com\/changes-canadian-practice-section-45-opposition-proceedings\/"},"modified":"2025-07-15T12:27:21","modified_gmt":"2025-07-15T16:27:21","slug":"changes-canadian-practice-section-45-opposition-proceedings","status":"publish","type":"post","link":"https:\/\/www.millerthomson.com\/en\/insights\/technology-ip-and-privacy\/changes-canadian-practice-section-45-opposition-proceedings\/","title":{"rendered":"Changes in Canadian practice for section 45 and opposition proceedings as of December 1, 2023"},"content":{"rendered":"\n

Significant changes to the practice notices issued by the Trademarks Opposition Board (\u201cTMOB<\/strong>\u201d) \u201cPractice in section 45 proceedings\u201d (the \u201cSection 45 Practice Notice<\/strong>\u201d) and \u201cPractice in trademark opposition proceedings\u201d (the \u201cPractice Notice for opposition proceedings<\/strong>\u201d) came into effect on December 1, 2023. These changes have considerably reduced the extensions of time and cooling off periods that are available to trademark owners and are part of the TMOB\u2019s continuous efforts to provide more timely and efficient proceedings. Deadlines that had already been requested or fixed prior to December 1 will not be affected by these changes.<\/p>\n\n\n\n

Section 45 proceedings<\/h2>\n\n\n\n

Section 45 of Canada\u2019s Trademarks Act <\/em>(the \u201cAct<\/strong>\u201d) provides a summary proceeding to remove registered trademarks from the trademarks register, either on the initiative of the Registrar or at the request of a third party, on the basis that the trademark has not been used in Canada during the last three years.<\/p>\n\n\n\n

The Registrar of Trademarks may grant extensions of deadlines fixed by the Act or the regulations made under the Act (the \u201cRegulations<\/strong>\u201d). These \u201cbenchmark extensions\u201d have been affected by the changes to the Section 45 Practice Notice. In particular, the amendments to the Section 45 Practice Notice have reduced the maximum length of an extension for a registered owner to file evidence in response to a section 45 notice. Trademark owners will now only be entitled to a 2 month extension of time as opposed to the previously available 4 month extension.<\/p>\n\n\n\n

A new ground for an extension of time based on \u201cexceptional circumstances\u201d has also been added. All existing exceptional circumstances remain available to request an extension. Now an extension can be requested on the basis of inability to meet a deadline despite acting diligently. These  requests must set out a reasonable explanation as to why the deadline cannot be met and must detail the past actions taken by the party prior to the deadline as well as the plan to meet the deadline. The request should demonstrate reasonable effort, promptness, and diligence and state the length of time required. The TMOB, however, will determine the length of the extension it will grant, if at all, based on the circumstances.<\/p>\n\n\n\n

The updated Section 45 Practice Notice provides the following examples of circumstances that that may be considered to qualify for this new basis for an extension request: i) inadvertent errors or omissions by a party; ii) an inherently lengthy evidence preparation process; or iii) the unavailability of relevant deponents due to involvement in other matters where the party has exhausted all efforts to find an alternate deponent. Notably, ongoing settlement negotiations between the parties will not fall within this new ground to request an extension.<\/p>\n\n\n\n

Opposition proceedings<\/h2>\n\n\n\n

The amended Practice Notice for opposition proceedings also significantly reduces the benchmark extensions of time that are available in an opposition proceeding as summarized below:<\/p>\n\n\n\n

Statement of Opposition<\/h3>\n\n\n\n