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Key aspects to consider prior to filing a Statement of Opposition in Canada against a trademark application

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Trademark oppositions are important in Canada. Indeed, the issuance of a registration provides a right to use the mark in Canada and, in most cases, acts as a shield against claims for monetary remedies until the registration is cancelled. Both applicants and opponents have an interest in gaining a good understanding of the process in order to maximize their chances of success. We have compiled  a number of questions that are frequently asked about trademark oppositions in Canada and provide succinct answers.

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Frequently Asked Questions (FAQ)

Q. Is it possible to oppose a trademark application in Canada? If so, when does this occur (i.e. what are the deadlines)?

A. Yes, it is possible to oppose a trademark application in Canada. This opportunity is provided prior to the issuance of a registration. Trademark applications are published in the Trademarks Journal and parties have two months from the date of this publication to initiate an opposition proceeding by filing a Statement of Opposition.

Q. Is it possible to obtain an extension of time to file a Statement of Opposition?

A. Yes, it is possible to obtain an extension of time to oppose a trademark. A four month extension of time is available to the extent a prospective opponent requires more time to investigate possible grounds of opposition. Such extensions are generally granted for the full four month period and do not require any consent from the applicant. It is also possible to request an extension of time of up to nine months as a cooling-off period to allow the parties to discuss a possible settlement of the dispute. This type of extension of time requires the consent of the applicant.

Q. If the deadline to oppose a trademark application is missed, is it possible to ask for a retroactive extension of time?

A. So long as registration has not issued, it is possible to ask for a retroactive extension of time to file a Statement of Opposition. A retroactive extension of time is only available if the failure of the prospective opponent to file a Statement of Opposition by the deadline was not reasonably avoidable. This requires a factual explanation and is not granted automatically.

Q. Why is it important to oppose trademark applications in Canada?

A. There are a three key features of Canadian trademark law that make it important to file oppositions. The first is that if a registration issues, the owner of the registration will normally not be liable to pay damages or account for profits made if the mark violates earlier rights. Monetary remedies can only be claimed after the registration is cancelled or if bad faith, fraud or intentional false declaration in securing the registration can be shown. Moreover, a registration can only be contested before the Federal Court of Canada and in that forum the burden of proof is reversed (the person challenging a registration in the Federal Court bears the burden of proof). Finally, if a registration is unchallenged after its fifth anniversary, it may no longer be possible to cancel it on the basis of prior use of a trademark or trade name.

Q. How long, overall, does a trademark opposition proceeding last?

A. This is quite variable and depends, amongst other factors, on whether evidence is filed by one or both parties, whether witnesses are cross-examined and if extensions of time are obtained by the parties. It is not uncommon that it take four to five years for a decision to issue in an opposition. That being said, if an applicant does not defend a proceeding it may take only a few months for a decision to issue.

Q. What is the cost of filing an opposition?

A. There are two components to this. The first is the official fees. They vary from one year to another. In 2023 the official Registrar fees for filing an opposition proceeding are CAD $789,43. The second component are the professional fees to draft the Statement of Opposition, which must include the specific grounds of opposition that are being invoked. This may require some investigation, for example to determine which party used the mark first in Canada. The professional fees will vary from one matter to another.

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