Opposition proceeding (Canada)

In Canadian trademark law, an opposition proceeding is an administrative process that allows any third party to stop a trademark from being registered.[1] Trademarks approved by the Canadian Intellectual Property Office (CIPO) and advertised in the Trademarks Journal can be opposed through this process.[1][2]

Not to be confused with objection proceedings, an administrative process to prevent a geographical indication from receiving protection in Canada, or more generally, opposition proceedings in other jurisdictions.

An opposition must be based on at least one of the grounds set out in the Trademarks Act and Trademarks Regulations, and it must be filed during the two-month period after the advertisement of the trademark in the Trademarks Journal.[1][2] These oppositions are heard and decided by the Trademarks Opposition Board (an administrative body within CIPO).[3]

The Trademarks Act and Trademarks Regulations govern opposition proceedings in Canada.[1][2] The Trademarks Act sets out the allowable grounds of opposition, procedural rules and protections, service requirements, and the timeframe and content requirements for pleadings filed by the opponent and trademark applicant.[1][2][4] Meanwhile, the Trademarks Regulations provide further details on timeframes and requirements for correspondence, documents, service, evidence, payment of fees, statements, written representations, cross-examinations, and hearings.[5] The Regulations also define the process for opposition proceedings involving applications made under the Madrid Protocol.[1][2][6]

Grounds of opposition

The Trademarks Act enumerates seven possible grounds that can be used to stop a trademark from being registered in Canada.[1] In an opposition proceeding, any third party can claim that the contents of the trademark application do not meet the statutory requirements in the Trademarks Act, the application was made in bad faith, the applicant is not entitled to register or use the trademark, and/or the applicant did not use or propose to use the trademark when the application was filed.[4] An opposition can also be made on the basis that the trademark is not registrable or distinctive.[4]

The terms "registrable" and "distinctive" have specific meanings in the context of the Trademarks Act. In an opposition proceeding, any third party can claim that the trademark is not "registrable" on the basis that it is the name of a person who is living or who has recently died (i.e., in the past 30 years), it describes the goods or services (either correctly or misleadingly), it is the actual name of the good or service (in English, French, or any other language), it is confusing with an already existing registered trademark, it is a prohibited mark (e.g., symbols used by governments, public institutions, humanitarian/international organizations, and the Olympics), it contains a misleading use of a geographical indication for wines/spirits or agricultural products/food, and/or it pertains to the utilitarian features or functions of the good or service.[7] A third party can also oppose a trademark on the basis that it is not "distinctive" in the sense that it does not distinguish the goods and services from those of others.[8] A trademark that describes the goods/services or a trademark that is the name of a person can still be registered if it was "distinctive" when the application was filed.[7]

Specifically in relation to applications made under the Madrid Protocol, the Trademarks Regulations stipulate that an opposition can be raised on the basis that the goods or services are outside "the scope of the international registration".[1][9]

Procedure

Opposition proceedings typically involve pleadings, evidence and arguments.[1] All documents must be properly served in the manner and timeframes set out in the Trademarks Act and Trademarks Regulations.[2] Opposition proceedings may span up to 4 years or more, although some may be finished in two years.[1]

Pleadings

Proceedings begin when a third party files a statement of opposition against a trademark application in order to stop it from being registered.[1][2] The third party must file an opposition during the two-month period after the advertisement of the trademark in the Trademarks Journal, unless a request is made and accepted for a time extension.[1][2] The statement of opposition is required to specify at least one of the grounds set out in the Trademarks Act and Trademarks Regulations.[1][2]

In response, the trademark applicant must file a counter statement which indicates that they will be contesting the opposition.[1][2] The applicant can also request an interlocutory ruling to dismiss the opposition (in whole or in part), but this can only be done before a counter statement is filed.[1][2] If the applicant does not take any action, its trademark application will be deemed abandoned unless a request is made and accepted for a time extension.[1][2]

Evidence

Both the third party (opponent) and the trademark applicant are required to submit evidence.[1][2] The opponent and applicant can also file a statement that they will not be submitting any evidence.[1] If the applicant does not take any action at all (either filing evidence or submitting a statement), the trademark application will be deemed abandoned; likewise, if the opponent does not take any action at all (either filing evidence or submitting a statement), the opposition will be deemed withdrawn.[2]

After both the opponent and trademark applicant file their evidence, the opponent is allowed to respond with additional evidence.[1] Both the applicant and opponent are also permitted to request cross-examination of the other party's evidence and witnesses.[1][2]

Arguments

Both the opponent and applicant can submit written arguments and/or request to provide oral arguments at a hearing.[1][2] The opponent and applicant can also file a statement that they will not be making any arguments.[2]

Decision and appeal

Once the proceeding is complete, the Trademarks Opposition Board (TMOB) makes a decision and provides written reasons.[1][2] The Board can either reject the opposition or refuse the trademark (completely or partially).[2] Decisions of the TMOB can be appealed to the Federal Court of Canada.[1][2]

See also

References
  1. "Opposition Proceedings—Canadian Intellectual Property Office". Government of Canada. 2020-06-30.
  2. "Practice in trademark opposition proceedings—Canadian Intellectual Property Office". Government of Canada. 2019-09-24.
  3. "Trademarks Opposition Board—Canadian Intellectual Property Office". Government of Canada. 2019-08-30.
  4. "Trademarks Act—Statement of opposition". Government of Canada. 2020-07-28.
  5. "Trademarks Regulations—Part 1: Rules of General Application (Continued)—Opposition Proceeding Under Section 38 of Act". Government of Canada. 2020-07-28.
  6. "Trademarks Regulations—Part 2: Implementation of Madrid Protocol (continued)—Territorial Extension to Canada (continued)—Opposition". Government of Canada. 2020-07-28.
  7. "Trademarks Act—When trademark registrable". Government of Canada. 2020-07-28.
  8. "Trademarks Act—Definitions". Government of Canada. 2020-07-28.
  9. "Trademarks Regulations—Goods or services outside scope of international registration". Government of Canada. 2020-07-28.
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