Opposition Proceeding (Page 3 of 4)

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This information is to be considered solely as a guide and should not be quoted as or considered to be a legal authority. Users of this information must also consult the Trade-marks Act, the Trade-marks Regulations and in decisions of the courts interpreting them. In the event of any discrepancy between the legislation and the information contained herein, the legislation will apply.

Cost of an opposition proceeding

In order to commence an opposition, a prescribed filing fee must be paid. Fees are also payable to obtain extensions of time (fees). Those are the only amounts payable to the Registrar but parties to an opposition will also spend time and money preparing evidence in the form of affidavits or statutory declarations, conducting cross-examinations, preparing arguments, etc. Overall, opposition proceedings are lengthy and not inexpensive. Moreover, there is no ability for the winning party to have any of its costs paid by the other side.

Payment of prescribed fees

Please contact the Client Service Centre for currently acceptable means of payment.

Please also see fees and the Practice Notices concerning payment of fees: Fee Payment Practice of the Canadian Intellectual Property Office, and Fee Payment: General Authorization to Charge a Deficiency.

Amending grounds of opposition

In some situations, it is possible to obtain leave to amend a statement of opposition (see Leave pursuant to r. 40 and 44(1) of the Regulations in Practice in Trademark Opposition Proceedings). However, as this cannot always be done, care should be taken in drafting the original statement of opposition (a registered trademark agent can assist you in this regard).

Settling an opposition

Given the expense and length of time required to complete an opposition proceeding, it is always advisable for both the opponent and the applicant to consider if there are any terms on which they could settle the opposition without the need to conclude opposition proceedings.

Alternative Dispute Resolution Resources

Defending an opposition and filing a counter statement

The owner of a trademark application (or its trademark agent) will receive a copy of an opponent's statement of opposition directly from the Registrar, together with a letter informing the applicant of its deadline to file and serve a counter statement.

If an applicant does not already have a trademark agent, it is strongly recommended to hire one at this point. Opposition proceedings typically are complex and cost much time and money and a trademark agent should be chosen carefully. Choose someone with proven expertise in this field. A list of trademark agents is available online or by contacting the Client Service Centre.

An applicant (or its trade–mark agent) must complete one of the following three actions prior to the expiration of its deadline, failing which its application may be deemed to have been abandoned. (If the deadline has already expired, see What do I do if I missed the deadline… below.)

  1. File a counter statement with the Canadian Intellectual Property Office (e.g. by mail or facsimile) and serve a copy on the opponent or the opponent's agent (e.g. by registered mail or, with the other side's consent, by facsimile), having regard to the following:
    1. service on the other side must be accomplished by the deadline and in accordance with the requirements set out in r. 37 of the Trade–marks Regulations – the correspondence filed with the Canadian Intellectual Property Office must clearly indicate when and how the counter statement was served on the other side;
    2. Form 9: Counter Statement to Opposition sets out one style of counter statement, but a counter statement may also merely consist of a statement that the applicant denies each and every allegation in the statement of opposition;
    3. Correspondence Procedures and section I of Practice in Trade–mark Opposition Proceedings;
    4. s. 38(6) of the Trade–marks Act.

    or

  2. Request an extension of time pursuant to s. 47(1) of the Trade-marks Act for the filing of a counter statement and pay the prescribed fee (see section V of Practice in Trade–mark Opposition Proceedings); the request must:
    1. identify the trademark application being opposed;
    2. provide sufficient reasons to explain why the extension of time is required;
    3. indicate the method by which the prescribed fee is being paid (see Payment of prescribed fees)
    4. cc. the opponent's agent (or the opponent if it does not have an agent).

    or

  3. Request an interlocutory ruling to strike all or any portion of the statement of opposition (e.g. on the basis that it alleges grounds other than those set out in s. 38 of the Trade-marks Act or does not set out sufficient details to enable the applicant to reply as required by s. 38(3) of the Act) and request an extension of time for filing its counter statement in view of the pending request for an interlocutory ruling. (See sections IV.1 and IV.1.1 of Practice in Trade–mark Opposition Proceedings.)

What do I do if I missed the deadline or if I did not properly complete one of the above three actions prior to the expiration of the deadline? It may be possible to obtain a retroactive extension of time pursuant to s. 47(2) of the Trade-marks Act in order to prevent the application from being deemed abandoned. Any such request must be accompanied by the prescribed fee (see prescribed fee and Payment of prescribed fees) and set out sufficient facts for the Registrar to be satisfied that the failure to take the necessary action within the deadline was not reasonably avoidable. The fee must accompany the request and the other side must be copied.

In general, please see Practice in Trade–mark Opposition Proceedings for further details.


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