What is a trademark opposition proceeding?
Trademark oppositions are administrative proceedings managed and heard by the Trademarks Opposition Board. The purpose is generally for an individual, company, or organization, to challenge a trademark application of another party to prevent it from becoming registered. This is done to protect their own trademark rights that could be affected negatively by confusion in the marketplace with the applied-for trademark. Many businesses use the opposition process to stop competitors from obtaining the rights granted by registration to the exclusive use of the applied-for mark throughout Canada. A trademark registration allows access to the Federal Courts for decisions that are enforceable Canada-wide, as opposed to a provincial passing-off action enforceable only in that province. A registration provides a defense to allegations of infringement and passing-off, it gives teeth to a cease and desist letter, and is required if a company would like to restrict importation of counterfeit goods at the border. All to say, a trademark registration is stronger and preferable over reliance on an unregistered common law mark. Blocking a competitor from having stronger rights granted by a registration is a key part of preserving one’s own monopoly over reputation in a brand.
Who can oppose a trademark in an opposition proceeding?
The Trademarks Act permits “any person” to oppose a trademark application. An opponent has an initial evidential burden to put its grounds of opposition in play. Some grounds are more difficult to assert when an Opponent is not the owner of a competing trademark, or where the use of the mark by a licensee does not enure to the owner’s benefit. Usually, an opponent owns a trademark that would be affected by the applied-for mark. On issues of entitlement due to prior use or making known of a mark in Canada, or an application previously filed in Canada, an opponent needs to have a trademark that it can assert against the applicant. “Any person”, including those not relying on their own trademark, may allege that a trademark is not registrable because it is clearly descriptive, deceptively misdescriptive, or lacks distinctiveness.
What is the process of opposing a trademark and what are the costs?
Once a party identifies an application advertised in the Trademarks Journal for opposition, they can start an opposition proceeding by filing a Statement of Opposition. After the Statement of Opposition is filed, the trademark applicant files a Counterstatement. If they do not, the proceeding ends. If the proceeding moves forward, the parties may each file evidence and cross-examine the other side’s witnesses. It is important to file evidence or a statement that one is not filing evidence. If not, the proceeding is considered abandoned. Parties can file written arguments and have a hearing. Limited extensions of time are available throughout, however most require consent of the other side.
Cost can vary significantly from one case to the next. Sometimes parties do not file evidence or arguments, or no hearing is requested which can lower the overall cost. As of January 1, 2024, many of the Canadian Intellectual Property Office’s government fees, including to oppose a trademark, are going up by 25%. These fees change on an annual basis. Currently the government fee to file a Statement of Opposition is $789.43 and it will be $1,040.00 in the new year.
How much time does it take to obtain a decision from the Registrar?
From filing a Statement of Opposition to a decision, the timeframe in my experience is about three years. And, if there are extensions of time such as two nine-month cooling off periods (recently reduced to seven months) to discuss settlement, or other extensions, it can be years longer. From a hearing to a decision is four months, although I have had a decision come out in a month after the hearing, and another took more than a year.
What are the possible outcomes of trademark oppositions?
There is win, lose, and divided. With a divided decision, both parties have some success. For example, the impugned mark can proceed to registration which is a win for an applicant. However, some of the goods or services can be struck from the application. This is a win for the opponent where the opponent trades in the same or similar goods and services. As well, oppositions can settle, end due to abandonment of the trademark, or be withdrawn at any time on a without prejudice basis.
When an applicant loses the opposition and the applied-for mark is refused, the applicant does not necessarily have to stop using their trademark. An opposition is about whether a trademark can become registered. Only a Court can order a party to stop using another’s trademark which would be a remedy in a successful trademark infringement or passing-off action. An Opposition Board decision is not the end of the matter. The decision can be appealed to the Federal Court, then to the Federal Court of Appeal. Trademark cases, in general, are rarely heard by the Supreme Court.
Are costs awarded by the Registrar in an opposition proceeding?
No. Changes to the Trademarks Act are anticipated in the future to allow for cost awards but for now there are none. Costs are awarded in the Federal Courts on appeals of oppositions. So that is something to keep in mind.
My trademark is getting opposed. What steps can I take?
If you would like to defend, file a Counterstatement within 2 months from the date of the opposition. Generally, the case will follow the process mentioned earlier. If you have no desire to defend, then the trademark application can be abandoned simply by not filing a Counterstatement. There is also the option to settle the opposition if the other side is agreeable.
Is it possible to appeal a decision of the Registrar in an opposition proceeding and what is the process to do so?
Yes. The process is to file a Notice of Application at the Federal Court pursuant to s. 56 of the Trademarks Act. Only parties to the proceeding before the Registrar of Trademarks have a right of appeal pursuant to this section. An appeal must be filed at the Federal Court within two months from the date the decision was dispatched by the Registrar. This deadline can be extended, but this is risky as a party would have to convince the Court it is deserving of an extension. You really do want to be on time.
About Amy M. Thomas
Amy is a lawyer and trademark agent with a background in architecture. She prides herself in constructing legal cases with strong foundations, fully strategized plans, and details with flourish (firmitas, utilitas, and venustas). Amy has over 20 years of experience in the trademark field including: oppositions and appeals, expungements, infringement disputes, and filing and prosecuting trademark applications. She represents clients at the Trademarks Opposition Board, Federal Court and Federal Court of Appeal. She is a Partner at Macera & Jarzyna LLP (law firm) and Moffat & Co. Patent and Trademark Agents, sister intellectual property boutiques located in Ottawa, Canada. Moffat & Co was established in 1970, and Macera & Jarzyna LLP shortly thereafter. Services are offered in all aspects of intellectual property including trademarks, patents, designs, copyright and plant breeders’ rights.
Amy M. Thomas
Barrister & Solicitor, Trade-mark Agent B.Arch. (architecture), LL.B.
Partner
MOFFAT & CO. / MACERA & JARZYNA LLP
715-11 Holland Ave., Ottawa, ON, K1Y 4S1 CANADA
Tel: 613-232-7302
Email: amy.thomas@moffatco.com
