What is an Opposition Proceeding?

An opposition proceeding provides a means to oppose a pending trademark application on any of the grounds set forth under the Trademarks Act. Where an opposition proceeding is successful, the pending trademark application will not proceed to registration.

What are some key Proposed Amendments?

I. Grounds of Opposition

Many of the grounds of opposition remain unchanged. Although Canada will be adopting the Nice Classification System, an Opponent will not be able to use an Applicant’s failure to group goods and services into classes, as required under the Nice Classification System, as grounds to oppose the Applicant’s trademark application.

Additional grounds of opposition are proposed, including the ability to oppose an application on the ground that the applicant was not using and did not propose to use its trademark at the time of filing.

II. Filing Requirements

Electronic filing of evidence will be specifically allowed, where service will be deemed effective on the date of transmission. Furthermore, a Statement of Opposition will no longer need to be filed in duplicate.

The proposed amendments also relax the requirements for a counter statement, such that the counter statement need only state that the Applicant intends to respond to the opposition.

III. Registrar’s Power to Strike

At an Applicant’s request, the Registrar may strike any portion of the Statement of Opposition at any time before the applicant files its Counter Statement. This codifies the opposition practice notice dealing with interlocutory rulings.

IV. Cross-Examination

The Registrar does not have to return the Affidavit of Evidence of a party who does not attend or declines cross-examination. The responsibility for service of transcripts and exhibits will be divided between the parties.

V. Written Representations

As is presently the case, the submission of written representations is optional. Moving forward, filing in duplicate will no longer be necessary. The time period within which written representations must be filed has been increased from one-month to two-months. In addition, written representations must be filed and served sequentially rather than the current practice of concurrently.

VI. Service Requirements

Service in-person or by courier or registered mail will still be allowed, but will be restricted to Canada. If service by any of these methods is not possible, notifying the other party that the document has been filed with the Registrar is permitted. Any other manner of service, as agreed to by the parties, will still be permitted. In addition, once a proceeding has commenced, parties would be required to forward a copy of any correspondence to the other party.

VII. Hearings

Parties will no longer receive a notice from the Registrar that they may request a hearing. Instead, all parties will have one-month to request a hearing on their own initiative.

What does this mean for Trademark Owners?

Trademark owners will likely experience a smoother yet slightly longer opposition process overall, as a result of the introduction of electronic filing and the increased timeline for filing written representations.

Need Help?

Contact our team at Parlee McLaws:

Suzanne Sjovold – Calgary Office – (403) 294-7069 – ssjovold@parlee.com

Elen L. Bereket – Edmonton Office – (780) 423 8501 – ebereket@parlee.com