Opposition Proceeding (Page 2 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 discrepancy between the legislation and the information contained herein, the legislation will apply.
Standing in an opposition proceeding
Any person is entitled to start an opposition, provided that such person relies on at least one of the grounds of opposition set out in s. 38 of the Trade-marks Act. If desired, any number of persons can be named jointly as opponents.
It is highly recommended that an opponent hire a registered trademark agent to represent it. Opposition proceedings typically are complex and cost much time and money, so you should choose your trademark agent carefully. Choose someone with proven expertise in this field. A list of trademark agents is available online or by contacting the Client Service Centre.
Starting an opposition proceeding and filing a statement of opposition
An opposition is commenced by the filing of a statement of opposition, in duplicate, with the prescribed fee
An opposition cannot be commenced until after the trademark application has been advertised in the Trademarks Journal. Once the application has been advertised, there is a two-month period within which a would-be opponent can either file a statement of opposition or request an extension of time for the purpose of doing so. Once the two-month period of time has elapsed, it may still be possible for a would-be opponent to start an opposition proceeding if it can obtain a retroactive extension of time for so doing. However, the Registrar will not act on any correspondence from a would-be opponent that is received after the trademark application has been allowed (you can conduct a search to determine the status of a trademark application and you can order copies of all or certain portions of an application file).
To request an initial extension of the two-month period for opposing an application, a would-be opponent (or its trademark agent) must:
- Compose a letter setting out the following:
- the identity of the trademark application being opposed, namely the trademark, the application serial number, the date of advertisement in the Trademarks Journal, and the name of the applicant;
- the identity of the would-be opponent, namely the name of the opponent, and its Canadian address (if the opponent does not have a Canadian address, then the name and address of its Canadian trademark agent or representative for service)
- the name and address of the opponent's trademark agent, if any;
- sufficient reasons to explain why the extension of time is required;
- the method by which the prescribed fee is being paid (see Payment of prescribed fees).
- Forward the letter and prescribed fee to the Canadian Intellectual Property Office Attention Opposition Board so that they arrive prior to the expiration of the two-month deadline (see Practice Notice entitled : Correspondence Procedures).
To commence an opposition, a would-be opponent (or its trademark agent) must:
- Prepare a statement of opposition, having regard to the following:
- Form 8: Statement of Opposition to an Application for Registration of a Trademark;
- s. 38(2) of the Trade-marks Act lists the only grounds on which an application may be opposed;
- s. 38(3) of the Trade-marks Act requires a statement of opposition to be set out in sufficient detail to enable the applicant to reply; a proper pleading alleges the material facts but not the evidence, which the party intends to adduce to establish those facts; and
- s. 38(4) of the Trade-marks Act authorizes the Registrar to not permit the opposition to proceed if the statement of opposition fails to raise a substantial issue for decision.
- Prepare a covering letter setting out the details of the trademark application being opposed and the method by which the prescribed fee is being paid (see Payment of prescribed fees).
- Forward the covering letter, together with the statement of opposition in duplicate and prescribed fee, to the Canadian Intellectual Property Office Attention Opposition Board so that they arrive prior to the expiration of the applicable deadline (see Correspondence Procedures).