Navigating Trademark Oppositions: What You Need to Know
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Introduction
Picture this: you've registered a trademark, and you're going about your business when suddenly, a letter from a law firm arrives. It informs you that you must either abandon your trademark or prepare for an opposition hearing. Confusion and concern set in. What exactly is a trademark opposition statement? In this blog post, we'll break down the process of a trademark opposition and provide you a better understanding of what lies ahead.
Statement of Opposition
If someone wants to halt the registration process of an application, they must file a statement of opposition with the Registrar (the "Opposition"). Per Section 38(1) of the Trademarks Act, RSC 1985, c T-13 (the “Act”), to file an Opposition, a party has two months from the date of a trademark advertisement. The Opponent is the person that wishes to oppose the trademark (the "Opponent"), and the applicant is the one who originally submitted the application for the trademark (the "Applicant").
An Opponent can oppose the registration of a trademark regardless of whether it directly affects their businesses. They only need to allege that the mark is unregistrable. Per Section 38(3) of the Act, the Opposition should include detailed grounds for the Opposition and the Opponent's address.
Section 38(2) provides the grounds on which an Opposition may be based:
(a) that the application does not conform to the requirements of subsection 30(2), without taking into account if it meets the requirement in subsection 30(3);
(a.1) that the application was filed in bad faith;
(b) that the trademark is not registrable;
(c) that the applicant is not the person entitled to registration of the trademark;
(d) that the trademark is not distinctive;
(e) that, at the filing date of the application in Canada, determined without taking into account subsection 34(1), the applicant was not using and did not propose to use the trademark in Canada in association with the goods or services specified in the application; or
(f) that, at the filing date of the application in Canada, determined without taking into account subsection 34(1), the applicant was not entitled to use the trademark in Canada in association with those goods or services.
The date for assessing the Applicant's compliance with the above-mentioned grounds depends on the particular section (i.e. the “material date”) (it is important to contact a trademark agent or lawyer to find out the material date for each particular section, as they can differ).
In an Opposition, the Opponent must include the material facts that the support the opposition to the Applicant's trademark. The Opposition Board may reject an Opposition that lacks supporting facts. If an Opposition lacks sufficient detail, the Applicant can request an amended statement, but the Board only checks if one substantial issue is raised. The Board cannot consider a ground not raised by the Opponent. The Opposition Board generally only considers issues raised in the original Opposition. If the Opponent wants to raise additional issues, they must seek permission to amend the Opposition. The Registrar has discretion to grant or refuse an amendment based on legal principles and the interests of justice.
The Registrar can reject an Opposition that does not raise a substantial issue or is frivolous. A substantial issue is one that could potentially lead to success for the Opponent if it is proven. The Registrar must assume the truth of the allegations in the Opposition and cannot apply a higher test of likelihood of success.
Counter Statement by Applicant
If the Registrar determines that the Opponent has raised at least one substantial issue in the an Opposition, they will forward it to the Applicant, who can response (it is noted that this is generally the time when the Applicant will call the lawyer).
The Applicant, within one month of receiving the statement, must file a counterstatement with the Trade-marks Office and serve a copy on the Opponent. The counterstatement and any additional material must be served personally or by registered mail to the Opponent's address in Canada, with service deemed effective on the mailing date.
The Applicant must notify the Registrar once service has been affected and, in his correspondence with the Registrar, the Applicant must clearly indicate (1) manner of service and (2) the date of service. If the Applicant does not file a counterstatement within the one-month time limit that is prescribed, its application for registration of a trade-mark will be deemed to have been abandoned.
Evidence for Opposition Proceeding
In the opposition proceeding, both the Applicant and the Opponent can submit evidence to the Registrar through affidavits or statutory declarations. The Opponent must submit evidence within one month of receiving the Applicant's counterstatement, while the Applicant must submit evidence within one month of receiving the Opponent's evidence. Failure to do so may result in the Opposition being deemed withdrawn or the application being deemed abandoned.
Exhibits should be filed along with the affidavits or declarations. The rules of evidence applicable in the Federal Court generally apply (it is important to contact a trademark agent or lawyer to understand the nuances of these rules). If a party fails to provide relevant evidence within their knowledge, the Registrar may draw a negative inference from that absence.
Parties can cross-examine each other on this evidence, but the party conducting the cross-examination must file a transcript of the cross-examination, exhibits, and any submitted documents within the designated timeframe. The party requesting the cross-examination is responsible for meeting the timelines set by the Registrar. If a party delays in fulfilling undertakings, the Opposition Board can set a deadline.
Written and Oral Arguments
Following the exchange of the evidence and the cross-examination, both the Applicant and the Opponent can present their arguments to the Registrar in written format. The Registrar will provide written notice, allowing the parties to file written arguments within one month. No arguments can be filed after this period without the Registrar's permission. An extension of time to submit arguments can be granted by the Registrar, with sufficient reasons and the consent of the other party. Generally, no further extensions will be granted after one extension has been given.
Once the parties have filed their written arguments or the filing period has expired, the Registrar notifies each party that an oral hearing may be requested. Within one month of receiving this notice, a party can request the oral hearing, and the Registrar will provide a notice with the hearing's details. Hearings can also be conducted via teleconference if requested. If no oral hearing is requested, the Registrar will make a decision based on the written arguments. The Opponent has the initial burden of providing evidence for each ground of opposition, while the applicant has the burden to establish the registrability of their mark. Following the hearing, the Registrar will issue a decision either refusing the application, rejecting the opposition, or allowing the application in part.
Conclusion
The process of a trademark opposition can be a complex and intricate journey that requires careful attention to detail and goes from filing an Opposition, to filing a counterstatement, to presenting evidence, to engaging in cross-examinations, to submitting written arguments, and to appearing in an oral hearing. It is crucial to seek professional guidance from a trademark agent or lawyer to effectively navigate through the nuances of this process.
Andrew Roy Legal offers both trademark agent and trademark lawyers’ services. Let us help guide you through the trademark opposition process, whether your application for a trademark is being opposed, or you need to oppose one that is infringing on your IP rights. Contact us today to learn more about how we can assist you.
The information in this article is not legal advice and does not establish an attorney-client relationship.
© 2023 Andrew Roy