Key Takeaways
• Oppositions are a necessary part of protecting your brand’s goodwill.
• In Canada, it is cheaper and easier to oppose an application than it is to try to get rid of a trademark registration that has already occurred.
• The process in Canada is similar to the process in the United States, but is significantly cheaper and simpler.
Introduction
This article addresses when and how to oppose a trademark application in Canada. Those familiar with the process in the United States will find it much the same.
When others try to register a trademark in Canada that impacts your business, it is important to intervene early, before registration occurs. Protecting a brand requires some offence. Allowing a similar mark onto the database has business and legal consequences - including undermining the legitimacy of your own trademarks, and potentially preventing you from enforcing your rights in the future.
1. When to Oppose
Often, the business case for an opposition comes from denying another the benefits of registration. A registration gives the owner the exclusive right to use the trademark throughout Canada in respect of the associated goods or services. It makes proving the owner’s rights easier in court, at the border, and for online takedown notices. It also affords a defence against infringement if others allege the trademark is confusing with their own.
Importantly, oppositions can ensure that competitors do not monopolize important or desirable terms which could give them a competitive edge when advertising.
As with many things in life, being proactive is better than being reactive. Oppositions, which seek to prevent applications from becoming registrations, are typically cheaper and less complex than expungement cases, which seek to remove registrations. It is therefore generally preferable to oppose an application rather than expunging a registration, although expungement offers a potential solution in cases where an opposition was not filed.
2. Identifying Problem Applications
Applications filed in Canada are advertised in the Trademarks Journal. This includes applications filed domestically and through the Madrid Protocol of the World Intellectual Property Organization. The applications are published in English and French on the website of the Canadian Intellectual Property Office.
Once advertised, opponents have two months to file a Statement of Opposition. An additional four-month extension can readily be obtained, with further extensions being available in certain circumstances.
Having a strategic watch service set up to catch potentially problematic applications is a good way to ensure that opposition windows are not missed.
3. Grounds of Opposition
In order to oppose an application, the opponent must set out the grounds of opposition in a Statement of Opposition. Potential grounds of opposition are organized into seven headings:
1) The application does not conform to filing requirements. This arises most often when the goods and services associated with the trademark are not sufficiently specific. Descriptions that seem ambiguous or unclear may be challenged on this basis.
2) The application was filed in bad faith. The meaning of “bad faith” has yet to be clearly defined by the case law, as this is a relatively new ground of opposition. Possible examples of bad faith behaviour could include filing applications for marks owned by others simply for possible sale value – i.e., trademark trolling or as retaliation against another business, or where a distributor knowingly attempts to register the mark of a manufacturer without authorization.
3) The trademark is “not registrable.” This refers to certain types of trademarks that Canadian law bars from registration, such as those that are:
a. primarily merely the name or surname of an individual who is living or has died within the last 30 years;
b. “clearly descriptive or deceptively misdescriptive” of the character or quality of the claimed goods or services, the conditions of the persons employed in their production, or their place of origin;
c. the name (in any language) of any of the claimed goods or services;
d. confusing with an existing registered trademark; or
e. a protected geographical indication.
4) The applicant is not the person entitled to register the trademark. An applicant is entitled to register a trademark if the mark was not, when it was filed or first used in Canada, confusing with:
a. another trademark previously used or made known in Canada, provided the opponent’s trademark was not abandoned;
b. another trademark in respect of which an application was previously filed, provided the opponent’s application was pending at the publication of the applicant’s application; or
c. a trade name previously used in Canada, provided the trade name was not abandoned.
5) The trademark is not distinctive. A mark that is generic or that is confusing with another trademark cannot distinguish an owner’s goods or services, and so does not legally qualify as a trademark.
6) At the filing date, the applicant was not using and did not propose to use the trademark in Canada. This ground should be raised against “trademark trolls” or “squatters” who do not have any intention of using their applied-for trademark at the time of filing.
7) At the filing date, the applicant was not entitled to use the trademark in Canada. This ground can be raised for a number of different reasons. In some cases, it is simply based on a claim of confusion with another trademark, which would already be covered by another ground of opposition and is unlikely to make or break the opponent’s case. However, an entirely different and more useful application of this ground is where an opponent claims that an applicant cannot use the trademark in Canada as doing so would contravene a federal statute.
4. Evidence Required
The parties may file evidence after the applicant responds to the Statement of Opposition, typically with a blanket denial set out in a document called the Counter Statement.
Most oppositions allege confusion with an opponent’s own trademark. As such, the opponent’s evidence will often include details of how and when the opponent used its trademark in Canada, including representative examples of use of the mark in Canada and evidence of sales figures and advertising expenditures, to prove the reputation and goodwill in the opponent’s mark in Canada. Companies will therefore be well-served by keeping organized records and documentation relating to the use of their trademarks from an early date. While evidence is not required to be filed, it is typically difficult for an opponent to succeed without filing evidence.
The applicant will often respond with evidence to prove there is no likelihood of confusion – for example, by showing the goods or services are used in different fields or are sold in different places. Alternatively, the applicant may seek to establish that there are many similar third-party marks being used in association with relevant goods or services.
Evidence is submitted by affidavit or statutory declaration.
If desired, each party has the opportunity to cross-examine any of the other party's affiants. Following the COVID-19 outbreak, the present practice is to schedule cross-examinations by videoconference. Notably, however, there is no right of discovery like in U.S. opposition proceedings.
5. Written Arguments, Hearing and Disposition
Following the evidence stage, the parties may sequentially file written arguments, with the opponent going first. Written arguments are not required, but offer an opportunity for the parties to present their cases in an organized and persuasive fashion.
The oral hearing stage takes place after the written arguments stage. Hearings proceed before a hearing officer of the Trademarks Opposition Board.
An oral hearing will only happen if a party requests it. If there is no hearing, then the Opposition Board will render a decision based on the record before it, including the written arguments if any were filed. Since the COVID-19 pandemic, holding hearings by videoconference has become and is expected to remain the default option.
A hearing typically occurs 20 to 30 months after the Statement of Opposition is filed, depending upon the optional steps and time extensions taken by the parties.
The Board’s decision will either allow or refuse the registration in whole or part. No damages or injunctions are available in this process. Under the current practice, there are no awards of costs in opposition proceedings.
6. Appeal
The Board’s decision may be appealed as of right to the Federal Court within two months of the transmission of the Board’s decision. Under the current law, additional evidence may be filed, also as of right, on appeal. A further appeal from the Federal Court to the Federal Court of Appeal is also available, as of right. The reviewing court in each case will determine the appropriate standard of review when considering the impugned decision.
While multiple appeals are available as described above, as a general rule, parties are best served by putting their best foot forward as early as possible. Primarily, this means filing the strongest available evidence during the opposition.
Conclusion
A competing trademark that encroaches your brand is a problem. Because registrations are powerful tools in a trademark arsenal, an easy way to protect your goodwill and reputation is routine diligence in opposing applications made by third parties.
Businesses would be well-served to have measures in place to ensure potentially trespassing applications are monitored, assessed, and brought to their attention.
Authors: Kwan T. Loh and Reagan Seidler are from Smart & Biggar’s Vancouver and Toronto offices, respectively. Smart & Biggar is widely recognized as Canada’s leading firm for intellectual property law with offices in Ottawa, Toronto, Montréal, Vancouver and Calgary.
Check Out Additional Resources
- Trademarks Examination Manual – Canadian Intellectual Property Office
- Practice in trademark opposition proceedings – Canadian Intellectual Property Office
- The importance of putting your best foot forward before the Trademarks Opposition Board – Philip Lapin, Partner, Barrister & Solicitor, Smart & Biggar
- ACC Intellectual Property Network
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