Trademark oppositions are important in Canada. Indeed, the issuance of a registration provides a right to use the mark in Canada and, in most cases, acts as a shield against claims for monetary remedies until the registration is cancelled. Both applicants and opponents have an interest in gaining a good understanding of the process in order to maximize their chances of success. We have compiled a number of questions that are frequently asked about trademark oppositions in Canada and provide succinct answers.
Learn more information about our trademark team.
Frequently Asked Questions (FAQ)
- Is it possible to oppose a trademark application on the basis of prior use, i.e. without a registration?
- Is it possible to oppose a registration on the basis of bad faith?
- Is it possible to oppose on other grounds, that do not involve confusion?
- Is the fact that a trademark is well known abroad a valid ground of opposition?
- Does the Registrar actively advise or give notice of potentially confusing applications?
Q. Is it possible to oppose a trademark application on the basis of prior use, i.e. without a registration?
A. Yes, it is possible to oppose a trademark application on the basis of prior use either as a trademark or trade name. There is no need to show that the opponent was well-known or famous. The use invoked by an opponent must predate any use made by the applicant prior to the date of its application. On that point, Canadian law does not require that an applicant disclose in a trademark application whether it has used the trademark and since when. It is best to investigate which party has first use before filing a Statement of Opposition.
Q. Is it possible to oppose a registration on the basis of bad faith?
A. Yes, it is possible to invoke the bad faith of an applicant as a ground of opposition. What amounts to bad faith is not detailed in the legislation, it is up to the Registrar and the Courts to determine this. Since this ground of opposition only became available in June 2019, there is still some uncertainty on this front.
Q. Is it possible to oppose on other grounds, that do not involve confusion?
A. Yes, there are a number of grounds of opposition that do not involve asserting confusion with another trademark or a trade name. These include, for example, not having an intention to use the trademark at the time of filing of the opposition, having insufficiently specific goods and/or services, non-compliance with laws or regulations that apply across Canada, etc. Some of these grounds can be rectified during the course of an opposition by making amendments to the application.
Q. Is the fact that a trademark is well known abroad a valid ground of opposition?
Q. Does the Registrar actively advise or give notice of potentially confusing applications?
A. With one exception, the Registrar is not required by law to notify third parties of potentially confusing trademarks that are applied for or advertised for opposition. That being said, the Registrar's trademark examiners are required to advise a relevant party of the publication of a potentially confusing mark if they have allowed the application on the basis that confusion is doubtful (in other words in a borderline situation). This occurs in a minority of cases. In order to oppose applications in a timely manner, it is best to retain a trademark surveillance service in order to be advised of potentially confusing applications.
Reach out and we will direct your message to a member of our trademark opposition team.
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.
