What’s a trademark opposition continuing?
Trademark oppositions are administrative proceedings managed and heard by the Logos Opposition Board. The aim is usually for a person, firm, or group, to problem a trademark utility of one other occasion to forestall it from changing into registered. That is completed to guard their very own trademark rights that could possibly be affected negatively by confusion within the market with the applied-for trademark. Many companies use the opposition course of to cease rivals from acquiring the rights granted by registration to the unique use of the applied-for mark all through Canada. A trademark registration permits entry to the Federal Courts for choices which can be enforceable Canada-wide, versus a provincial passing-off motion enforceable solely in that province. A registration gives a protection to allegations of infringement and passing-off, it offers tooth to a stop and desist letter, and is required if an organization want to prohibit importation of counterfeit items on the border. All to say, a trademark registration is stronger and preferable over reliance on an unregistered widespread regulation mark. Blocking a competitor from having stronger rights granted by a registration is a key a part of preserving one’s personal monopoly over fame in a model.
Who can oppose a trademark in an opposition continuing?
The Logos Act permits “any individual” to oppose a trademark utility. An opponent has an preliminary evidential burden to place its grounds of opposition in play. Some grounds are harder to say when an Opponent isn’t the proprietor of a competing trademark, or the place the usage of the mark by a licensee doesn’t enure to the proprietor’s profit. Normally, an opponent owns a trademark that may be affected by the applied-for mark. On problems with entitlement on account of prior use or making identified of a mark in Canada, or an utility beforehand filed in Canada, an opponent must have a trademark that it could actually assert in opposition to the applicant. “Any individual”, together with these not counting on their very own trademark, might allege {that a} trademark isn’t registrable as a result of it’s clearly descriptive, deceptively misdescriptive, or lacks distinctiveness.
What’s the means of opposing a trademark and what are the prices?
As soon as a celebration identifies an utility marketed within the Logos Journal for opposition, they’ll begin an opposition continuing by submitting a Assertion of Opposition. After the Assertion of Opposition is filed, the trademark applicant recordsdata a Counterstatement. If they don’t, the continuing ends. If the continuing strikes ahead, the events might every file proof and cross-examine the opposite facet’s witnesses. You will need to file proof or an announcement that one isn’t submitting proof. If not, the continuing is taken into account deserted. Events can file written arguments and have a listening to. Restricted extensions of time can be found all through, nevertheless most require consent of the opposite facet.
Price can range considerably from one case to the following. Typically events don’t file proof or arguments, or no listening to is requested which might decrease the general value. As of January 1, 2024, lots of the Canadian Mental Property Workplace’s authorities charges, together with to oppose a trademark, are going up by 25%. These charges change on an annual foundation. At the moment the federal government price to file a Assertion of Opposition is $789.43 and it will likely be $1,040.00 within the new yr.
How a lot time does it take to acquire a choice from the Registrar?
From submitting a Assertion of Opposition to a choice, the timeframe in my expertise is about three years. And, if there are extensions of time similar to two nine-month cooling off durations (not too long ago decreased to seven months) to debate settlement, or different extensions, it may be years longer. From a listening to to a choice is 4 months, though I’ve had a choice come out in a month after the listening to, and one other took greater than a yr.
What are the potential outcomes of trademark oppositions?
There’s win, lose, and divided. With a divided choice, each events have some success. For instance, the impugned mark can proceed to registration which is a win for an applicant. Nonetheless, among the items or providers will be struck from the applying. It is a win for the opponent the place the opponent trades in the identical or comparable items and providers. As nicely, oppositions can settle, finish on account of abandonment of the trademark, or be withdrawn at any time on a with out prejudice foundation.
When an applicant loses the opposition and the applied-for mark is refused, the applicant doesn’t essentially must cease utilizing their trademark. An opposition is about whether or not a trademark can turn into registered. Solely a Court docket can order a celebration to cease utilizing one other’s trademark which might be a treatment in a profitable trademark infringement or passing-off motion. An Opposition Board choice isn’t the top of the matter. The choice will be appealed to the Federal Court docket, then to the Federal Court docket of Enchantment. Trademark circumstances, basically, are hardly ever heard by the Supreme Court docket.
Are prices awarded by the Registrar in an opposition continuing?
No. Adjustments to the Logos Act are anticipated sooner or later to permit for value awards however for now there are none. Prices are awarded within the Federal Courts on appeals of oppositions. So that’s one thing to bear in mind.
My trademark is getting opposed. What steps can I take?
If you want to defend, file a Counterstatement inside 2 months from the date of the opposition. Typically, the case will observe the method talked about earlier. When you have no need to defend, then the trademark utility will be deserted just by not submitting a Counterstatement. There’s additionally the choice to settle the opposition if the opposite facet is agreeable.
Is it potential to attraction a choice of the Registrar in an opposition continuing and what’s the course of to take action?
Sure. The method is to file a Discover of Software on the Federal Court docket pursuant to s. 56 of the Logos Act. Solely events to the continuing earlier than the Registrar of Logos have a proper of attraction pursuant to this part. An attraction should be filed on the Federal Court docket inside two months from the date the choice was dispatched by the Registrar. This deadline will be prolonged, however that is dangerous as a celebration must persuade the Court docket it’s deserving of an extension. You actually do need to be on time.
About Amy M. Thomas
Amy is a lawyer and trademark agent with a background in structure. She prides herself in developing authorized circumstances with robust foundations, absolutely strategized plans, and particulars with flourish (firmitas, utilitas, and venustas). Amy has over 20 years of expertise within the trademark area together with: oppositions and appeals, expungements, infringement disputes, and submitting and prosecuting trademark functions. She represents shoppers on the Logos Opposition Board, Federal Court docket and Federal Court docket of Enchantment. She is a Associate at Macera & Jarzyna LLP (regulation agency) and Moffat & Co. Patent and Trademark Brokers, sister mental property boutiques situated in Ottawa, Canada. Moffat & Co was established in 1970, and Macera & Jarzyna LLP shortly thereafter. Providers are provided in all features of mental property together with emblems, patents, designs, copyright and plant breeders’ rights.
Amy M. Thomas
Barrister & Solicitor, Commerce-mark Agent B.Arch. (structure), LL.B.
Associate
MOFFAT & CO. / MACERA & JARZYNA LLP
715-11 Holland Ave., Ottawa, ON, K1Y 4S1 CANADA
Tel: 613-232-7302
E-mail: amy.thomas@moffatco.com