Opposition proceedings can be relatively complex, lengthy and costly. The complexity, length and cost of an opposition depend on many factors, including the number and nature of the grounds of opposition, the factual scenario and resulting issues to be addressed, the amount of evidence required and, in particular, the steps that are taken in the opposition, many of which are optional. This article provides a general overview of Canadian opposition proceedings.
The Statement of Opposition. Opposition proceedings are commenced by filing a Statement of Opposition with the Registrar of Trademarks. The initial deadline is two months from the date of publication of the application in the Canadian Trademarks Journal. A three-month extension of time can readily be obtained.
Upon filing a Statement of Opposition, the Registrar reviews the grounds of opposition and in the absence of a totally frivolous opposition, a copy of the Statement of Opposition is forwarded to the applicant.
There are four main grounds of opposition, namely:
- the application does not conform with the filing requirements of section 30 of the Trademarks Act;
- the trademark is not registrable pursuant to section 12;
- the applicant is not the person entitled to registration of the trademark pursuant to section 16; and
- the trademark is not distinctive.
The application does not conform with section 30. There are several technical grounds of opposition under section 30, including:
- section 30(a) requires that a trademark application contain a statement in ordinary commercial terms of the specific wares or services in association with which the mark has been or is proposed to be used. An application can be opposed on the basis that the statement is not in ordinary commercial terms, or is ambiguous or unclear;
- section 30(b) requires that, in the case of a trademark that has been used in Canada, the application must set out a date of first use in Canada. An application can be opposed on the basis that the claimed date of first use is too early, or on the basis that there has been no use such that the application should have been based on proposed use rather than actual use;
- section 30(e) requires that in the case of a proposed trademark, the application must contain a statement that the applicant intends to use the trademark in Canada. Unlike in the U.S., a proposed use application can be opposed on the basis that the trademark was actually in use in Canada prior to the filing date, such that the application should have been based on actual use rather than proposed use, or on the basis that the applicant did not have a real intention to use the trademark; and
- section 30(i) requires that an application contain a statement that the applicant is satisfied that it is entitled to use the trademark in Canada. This ground is typically pleaded on the basis that the applicant could not have been so satisfied since the applied-for trademark is confusing with the trademark(s) of the opponent. However, this ground may also be pleaded where the use of the applied-for trademark would be in violation of a statute such as the Copyright Act or the Foods and Drugs Act, as well as sections of the Trademarks Act such as section 7(b) (passing off) and section 22 (depreciation of goodwill).
The trademark is not registrable pursuant to section 12. There are several grounds of opposition under section 12, including:
- the trademark is primarily merely the name or surname of an individual who is living or has died within the preceding 30 years, contrary to section 12(1)(a);
- the trademark is clearly descriptive or deceptively misdescriptive of the character or quality of the wares or services, the conditions of or the persons employed in their production, or of their place of origin, contrary to section 12(1)(b);
- the trademark is the name in any language of any of the wares or services, contrary to section 12(1)(c);
- the trademark is confusing with a registered trademark, contrary to section 12(1)(d); and
- the trademark is a mark the adoption of which is prohibited, or is in whole or in part a protected geographical indication, contrary to sections 12(1)(e) through (h).
The applicant is not the person entitled pursuant to section 16. Section 16 stipulates the persons who are entitled to registration. In the case of a trademark used in Canada, the applicant is entitled to registration provided the trademark was not, when it was first used, confusing with a trademark or trade name previously used in Canada, or a trademark in respect of which an application was previously filed in Canada. In the case of a proposed trademark, it is also necessary that an application for a confusing trademark had not been previously filed.
The trademark is not distinctive. An opposition may also be filed on the basis that the applied-for trademark is not distinctive, as the mark will not serve as a unique indication of source.
The Counterstatement. The applicant has two months from the date on which the Statement of Opposition was sent by the Trademarks Office to deliver a Counterstatement, failing which the application will be deemed to be abandoned. A two-month extension of time can be readily obtained.
Typically, a Counterstatement simply includes denials of each and every ground of opposition. There is no opportunity at this stage, nor at any other stage of the opposition, for the applicant to challenge the validity of the opponent's registered rights.
The opponent's evidence. If a Counterstatement is served and filed, the opponent has an initial deadline of four months from service to deliver evidence in support of its opposition. A three-month extension of time is available, but only with the consent of the applicant.
If the goal in commencing opposition proceedings is to simply defer the issuance of a registration at minimal cost, the opposition can be maintained without the filing of any affidavit evidence. In lieu of evidence, the filing of a statement that the opponent does not intend to file evidence is all that is required to maintain the opposition.
The applicant's evidence. The applicant has four months from the service of the opponent's evidence to deliver its affidavit evidence. A three-month extension of time is also available to the applicant, with the consent of the opponent.
Cooling-off periods. In addition to the extensions of time described above, the opponent may obtain one extension of time up to a maximum of nine months, with the consent of the applicant, amounting to a cooling-off period, to allow the parties to pursue settlement negotiations. This extension of time may be obtained either prior to the expiration of the initial deadline, or extended deadline, for the filing of a Statement of Opposition, or prior to the expiration of the initial deadline, or extended deadline, for the delivery of the opponent's evidence.
The applicant may also obtain the same extension, once and with the consent of the opponent, either prior to the expiration of the initial or extended deadline for the delivery of the Counterstatement, or prior to the expiration of the initial or extended deadline for the delivery of the applicant's evidence.
The opponent's reply evidence. Following the delivery of the applicant's evidence, the opponent has an opportunity to file evidence in reply. The initial deadline is one month from the service of the applicant's evidence. A four-month extension of time is available, but only with the consent of the applicant.
Cross-examination. The parties have the opportunity to cross-examine any or all of the other party's affiants. There is no broad right of discovery like in U.S. proceedings.
Leave to cross-examine must formally be obtained, leave is invariably granted, and a deadline of four months for the completion of the cross-examination will be stipulated in the cross-examination order. A request for leave to cross-examine can be filed at any time prior to the issuance by the Registrar of the notice setting the deadline for the filing of written arguments. However, generally, the applicant will seek leave to cross-examine the opponent's affiants and conduct the cross-examination prior to preparing its own evidence. Similarly, the opponent will generally seek leave to cross-examine the applicant's affiants and conduct the cross-examination prior to preparing its reply evidence, if any.
Also, if the applicant requests leave to cross-examine within two months of the service of the opponent's evidence, the applicant can request a four-month extension for filing its evidence, which begins at the completion of the cross-examination. It is important to note that this four-month extension will be automatically reduced to two months if the applicant fails to conduct the cross-examination by the four-month deadline.
The same extension for the filing of reply evidence is available to the opponent, provided the opponent requests leave to cross-examine within one month of the service of the applicant's evidence. As well, the same automatic reduction of the four-month extension down to two months applies if the opponent fails to complete the examination on time.
A four-month extension of the deadline to complete the cross-examination is available with the consent of the other party.
It is important to note that a foreign affiant will be required to attend in Canada for the cross-examination at the expense of the party who tendered the evidence. As a result, if cost is an issue, care should be taken to avoid using a foreign affiant. In addition, there is no ability in Canadian opposition proceedings to find an affiant in contempt for refusing to answer relevant questions on a cross-examination. A party can only ask that the Registrar draw an adverse inference from the other party's failure to answer relevant questions.
Written argument. Within 14 days following the completion of the evidence stage, both parties will be invited by notice from the Registrar to submit written arguments within one month from the date of the notice. The written arguments are filed by both parties at the same time, in duplicate, and the Trademarks Office forwards a copy of the written argument of a party to the other party. The written arguments are not filed sequentially.
A four-month extension of time is available with the consent of the other party. While filing a written argument is not mandatory, failing to do so overlooks an important opportunity for written advocacy.
Oral hearing. After the filing of the written arguments or the expiry of the deadline for doing so, the Registrar will send a notice to the parties advising that they have one month to request an oral hearing. The oral hearing may be attended either in person or by telephone (so long as there is no need for translation services). No request for an extension will likely be considered. If no oral hearing is requested by either party, the Registrar will render a decision based on the written material submitted.
Appeal to the Federal Court. The decision of the Registrar can be appealed, as of right, to the Federal Court, within two months of the date of the Registrar's decision. Additional evidence may be filed, also as of right, on appeal.
Miscellaneous. It is important to bear in mind that an opposition or application can be withdrawn at any time during the course of the opposition, without cost consequences. In addition, irrespective of the outcome of the opposition, or the conduct of the parties, no costs can be awarded against a party. Finally, the decision of the Registrar in an opposition is not binding in infringement proceedings.
Geneviève M. Prévost, Toronto
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