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.
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Frequently Asked Questions (FAQ)
- Is it possible to strike certain grounds of opposition at a preliminary stage?
- Can the Registrar summarily reject an opposition?
- Is it necessary to file evidence along with a Statement of Opposition?
- Is a power of attorney necessary to file a Statement of Opposition?
- If I receive a Statement of Opposition, how much time do I have to contest an opposition?
- Is a cooling off period available to negotiate settlements?
- Is it possible to contest the rights of the opponent if its mark is not in use?
- Who has the burden of proof in an opposition?
- How much time does each party have to prepare and file its evidence?
- What kind of evidence should be filed?
- Is it possible to cross-examine witnesses based on their affidavits or statutory declaration?
- Is it possible to file reply evidence?
- Is it possible not to file evidence at all?
- Are protective/confidentiality orders available?
- Does the Registrar require written representations in an opposition proceeding?
Q. Is it possible to strike certain grounds of opposition at a preliminary stage?
Q. Can the Registrar summarily reject an opposition?
A. Yes. The Registrar will examine the Statement of Opposition, and if it raises no substantial issue for decision, it may reject the Statement of Opposition without even communicating it to the applicant. To the extent there is at least one ground of opposition raising a substantial issue for decision, the Statement of Opposition as a whole will be accepted and communicated to the applicant.
Q. Is it necessary to file evidence along with a Statement of Opposition?
A. No. The opponent's deadline to submit and serve its evidence is four months from the date of service of the applicant's Counter Statement of Opposition. If the opponent does not wish to file evidence, a statement to this effect must be filed with the Registrar within the same deadline.
Q. Is a power of attorney necessary to file a Statement of Opposition?
A. No, a power of attorney is not required. The Registrar will send all further correspondence to the trademark agent signing the Statement of Opposition.
Q. If I receive a Statement of Opposition, how much time do I have to contest an opposition?
A. A Counter Statement of Opposition must be filed two months from the date on which the Registrar forwards the Statement of Opposition to the applicant; a two month extension of time may be requested. Consent from the opponent is not required. It is very important to file a Counter Statement of Opposition because failure to do so within the prescribed deadline will result in the application being deemed abandoned.
Q. Is a cooling off period available to negotiate settlements?
A. Yes. A cooling-off period is available to negotiate settlements. Each party may ask for one cooling-off extension of up to nine months. The Registrar will require the consent of the other party to grant the extension of time. This cooling off period can be ended early in the event settlement negotiations cease.
Q. Is it possible to contest the rights of the opponent if its mark is not in use?
A. It is not possible to do so within the opposition proceeding. A trademark registered for at least three years may nonetheless be expunged for non-use pursuant to separate summary cancellation proceedings filed under section 45 of the Trademarks Act. Within three months of the date of notice of the proceedings being sent to the registered owner, affidavit evidence showing that the mark was used in Canada in association with all the goods and services listed in the registration during the three-year period preceding the date of the notice must be provided. Failure to file evidence or failure to file satisfactory evidence may lead to expungement of the registration in whole or in part. It is also possible to contest a registration for non-use before a Court of law, in which case abandonment of the trademark must be shown.
Q. Who has the burden of proof in an opposition?
A. There is an initial evidentiary burden on the opponent to adduce sufficient admissible evidence to support each ground of opposition set out in the Statement of Opposition. If the opponent meets the initial evidentiary burden, the onus then shifts to the applicant to prove that the various grounds of opposition should not prevent registration of its trademark. The opponent's initial burden is generally light.
Q. How much time does each party have to prepare and file its evidence?
A. The opponent has a four month deadline to submit and serve its evidence or a statement to the effect that it will not be filing evidence. This deadline is calculated from the effective date of service of the applicant's Counter Statement of Opposition. The applicant then has a four month deadline to submit and serve its evidence. This deadline is calculated from the effective date of service of the opponent's evidence, or its statement to the effect that it will not be filing evidence.
Q. What kind of evidence should be filed?
A. Evidence must be submitted by way of affidavit or statutory declaration. Any individual signing an affidavit or a statutory declaration may be cross-examined upon request by the other party to the Registrar. The nature of the evidence to be filed will vary depending on the grounds of opposition raised. A representative from a party could, for example, file evidence of prior use. In some cases where use or market investigations are made, affidavits or statutory declarations may be signed by the investigator or the researcher who carried out the investigation. It is important to keep in mind that the deponent must have personal knowledge of the facts set out in the affidavit. Finally, any evidence filed with the Registrar is available to the public.
Q. Is it possible to cross-examine witnesses based on their affidavits or statutory declaration?
Q. Is it possible to file reply evidence?
A. The opponent may decide to file evidence in reply. This is not mandatory, but if the opponent decides to file such evidence, it has one month from the effective date of service of the applicant's evidence to do so. There is no reply evidence available to the applicant. A party wishing to submit any additional evidence may only do so with leave from the Registrar.
Q. Is it possible not to file evidence at all?
A. Any party who decides not to file evidence must file a statement to this effect with the Registrar. Such statement must be filed within the prescribed deadline to file evidence. If the opponent fails to submit and serve evidence, or a statement that the opponent does not wish to submit evidence, this will result in the opposition being deemed abandoned or withdrawn. For many grounds of opposition, not filing evidence may be fatal.
Q. Are protective/confidentiality orders available?
A. As a general rule, all documents and information filed with the Registrar in an opposition proceeding are available to the public. The Registrar is presently working on a practice notice regarding confidentiality orders. These are consequently not available yet in opposition proceedings. A request to keep evidence confidential will have to be filed with the Registrar prior to submitting the evidence at issue.
Q. Does the Registrar require written representations in an opposition proceeding?
A. Written representations are optional. The Registrar does not require that the opponent or the applicant file written representations. Following the filing of any evidence, each party will receive a notice from the Registrar inviting it to file written representations. The opponent has two months from the notice to serve and file written representations, if they so choose. The applicant has two months following the filing of the opponent's written representations (or the opponent's deadline) to file its own. If a party chooses not to file any, that party can still plead orally. Any party seeking to plead orally must request a hearing. It is generally advisable to file written representations in an opposition proceeding, especially if significant evidence has been filed.
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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.
