There are essentially two scenarios with respect to trademark opposition:
- Your trademark application is being challenged because the owner of a registered trademark believes the mark is directly infringing on their registered trademark.
- You want to file an opposition to someone else’s trademark application because you believe their mark is infringing on your registered trademark.
In either scenario, you will be required to enter trademark opposition proceedings which may require extensive time and resources to resolve.
The party who files the opposition is the “opponent” and the party who applies for the trademark is the “applicant”.
This article will walk you through the opposition process and help you gain a better understanding why legal representation plays an important role in these opposition proceedings.
Grounds for Opposition
The first step is to ensure that you have the proper grounds for opposing a trademark application, if you are the party filing the opposition.
Section 38 (1) and (2) of the Trade-Marks Act lays out the rules for opposition of a trademark, including the following:
(2) A statement of opposition may be based on any of the following grounds:
(a) that the application does not conform with the regulatory requirements of section 30
The requirements for section 30 state that the trade-mark application must contain a number of different types of information, including but not limited to the following:
- a statement in ordinary commercial terms of the specific goods and/or services that the trade-mark is being used in connection with the trademark
- If the proposed trade-mark is currently being used, the date in which the applicant starting using the trade-mark in association with the goods and/or services used in connection with the trademark.
- If the proposed trade-mark has not been used, a statement that the applicant intends to use the trade-mark in Canada.
- the address of the applicant’s principal office/ place of business
- a drawing of the trade-mark logo if applicable
(b) that the trade-mark is not registrable:
- the mark is a generic term that is descriptive in nature for the goods and services offered;
- the mark is a surname;
- the mark is offensive, scandalous or immoral;
- the mark is confusing with another trademark, official mark, an Olympic mark or a geographical indication registered in Canada; or
- the mark may be mistaken for various government symbols and phrases such as official crests, flags or symbols adopted by any level of government in Canada or foreign country
(c) that the applicant is not the person entitled to registration of the trade-mark:
- another party had prior use of the mark or a confusingly similar mark in Canada; or
- the applicant used the mark only as a licensee of another party
(d) that the trade-mark is not distinctive:
- another party had prior use of the mark or a confusingly similar mark in Canada
The Opposition Process
An opposition cannot be commenced until after the trade-mark application has been advertised in the Trade-marks journal.
Once advertised, there is a two month window a potential opponent can file a statement of opposition or request an extension of time to do so.
In some cases, an opponent can start an opposition after the 2 month period has elapsed, if it can get a retroactive extension of time.
Stages of Opposition
Image source: www.ic.gc.ca
File Statement of Opposition
To commence an opposition, the potential opponent must:
- Complete Form 8: Statement of Opposition to an Application for Registration of a Trademark;
- Consider section 38 of the Trademarks Act, which lays out the grounds for opposition (as explained in the previous section).
- Provide sufficient statement of opposition with enough detail to enable the applicant to reply; and
- Include section 38(4) of the Trade-Marks Act which authorizes the registrar to not permit the opposition to proceed if the statement of opposition fails to raise a substantial issue for a decision to be made.
Begin the opposition by filing the statement of opposition with the prescribed fee of $750 to the Trademark Opposition Board.
The following stages apply to both the opponent and the applicant.
The Pleadings Stage
Once the opposition has been filed, the owner of the trademark application (or their trademark lawyer) will receive a copy of the opponents’ statement of opposition.
This statement of opposition will include a letter informing the applicant of its deadline to file and serve the counter-statement.
If the process cannot be settled, the counter-statement must be filed with the Canadian Intellectual Property Office, and served upon the opponent or the opponent’s trademark agent.
The Evidence Stage
The opponent will then need to file evidence that supports its reasons for filing the statement of opposition.
The applicant will need to file evidence that rebuts the opponent’s evidence. After that, either party may obtain orders to cross examine.
The Argument Stage
This stage involves allowing the opponent and the applicant to file written arguments, and make submissions at an oral hearing.
The Trademark Opposition Board Decision
The trademark opposition board will then make a decision based on the evidence.
Appealing the Decision
Pursuant to section 56 of the Trade-marks Act, an appeal of the Registrar’s decision may be made to the Federal Court of Canada, within two months from the date on which notice of the decision was dispatched by the Registrar to you or within such extended time as the Court may allow.
Have a Trademark Lawyer Protect Your Brand
Going through the trademark opposition process can be long and arduous.
When responding to an opposition you must meet certain legal requirements and ensure you abide by all the deadlines set by the Trademark Opposition Board, and ensure you make the necessary legal arguments.
It can be difficult for a trademark owner to respond efficiently and continuously meet all the requirements of the opposition proceeding without the assistance of an attorney.
If you have any questions regarding Canadian intellectual property rights and would like to speak to a trademark lawyer, you can request a free consultation on our contact form.