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 36 LAWYER MONTHLY DECEMBER 2023 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 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.
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