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 As well, oppositions can settle, end due to abandonment of the trademark, or be withdrawn at any time on a without prejudice basis.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. WWW.LAWYER-MONTHLY.COM 37 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.
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