Archived — Review of Statements of Opposition under Subsections 38(4) and (5) of the trade-marks Act

Review of Statements of Opposition under Subsections 38(4) and (5) of the Trade-marks Act

Publication Date: 2006-11-08

It is the responsibility of the opponent to ensure that each of its grounds of opposition is properly pleaded. The failure to do so may result in a ground of opposition not being considered: see, e.g., Massimo De Berardinis v. Decaria Hair Studio (1984), 2 C.P.R. (3d) 319.

The responsibility of the Trademarks Opposition Board pursuant to ss. 38(4) and (5) of the Trade-marks Act is only to determine if the opposition raises one substantial issue for decision and is not to ensure that all grounds are properly pleaded.

Prior to filing and serving its counter statement, the applicant may request an interlocutory ruling to strike all or any portion of the opponent's pleadings (see Novapharm Limited v. AstraZeneca AB (2002), 21 C.P.R. (4th) 289 at 294 (F.C.A.)). A request for an interlocutory ruling has no effect on any outstanding deadlines. If required, the applicant will be granted extensions of time of three months to file its counter statement, upon request and payment of the corresponding fee, until the interlocutory ruling has issued. The consent of the other party will generally not be required.

The Board will generally give the opponent the opportunity to reply and/or request leave to file an amended statement of opposition under Rule 40 of the Trade-marks Regulations (1996) to respond to the applicant's objections.

Once the proceedings have progressed to the evidence stage, issues concerning the sufficiency of pleadings will be considered at the decision stage.

 

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