Opposition Proceeding (Page 1 of 4)
Notice: This information is to be considered solely as a guide and should not be quoted as or considered to be a legal authority. Users of this information must also consult the Trade–marks Act, the Trade–marks Regulations and in decisions of the courts interpreting them. In the event of any discrepency between the legislation and the information contained herein, the legislation will apply.
An opposition is a proceeding before the Registrar of Trade–marks (the Registrar) whereby somebody (the opponent) objects to the registration of a trade–mark in Canada.
A successful opposition prevents a trade–mark application from issuing to registration. It does not prevent an applicant from using its mark in Canada; only the courts can prohibit a party from using a mark.
The standard stages in an opposition proceeding are as follows:
- Pleadings Stage:
- the opponent files a statement of opposition setting out its grounds of opposition;
- the Registrar reviews the statement of opposition and, if it is deemed to be sufficient, serves it on the applicant;
- the applicant (unless it first wants to challenge the sufficiency of the statement of opposition) files and serves a counter statement denying the grounds of opposition.
- Evidence Stage:
- the opponent files and serves evidence in the form of affidavits or statutory declarations (alternatively, it files and serves a statement that it does not wish to file evidence)
- the applicant files and serves evidence in the form of affidavits or statutory declarations (alternatively, it files and serves a statement that it does not wish to file evidence)
- the opponent may also file and serve evidence in the form of affidavits or statutory declarations in reply to the applicant's evidence;
- either party may obtain orders to cross–examine the other's deponents.
- Argument Stage:
- the opponent and the applicant are each given an opportunity to file written arguments;
- the opponent and the applicant are each given an opportunity to make submissions at an oral hearing.
Once all of the stages are complete, the Registrar issues a written decision. This decision is appealable to the Federal Court.