How to Oppose a Trademark in Canada

What is a Trademark in Canada?

You can review information about trademarks, generally, from our article on trademarks, as well as our previous post on registered trademarks in Canada.

What is a Trademark Opposition?

Pursuant to the Trademarks Act, any person may, within two months after the advertisement of an application for the registration of a trademark, bring an opposition against a trademark application. A trademark opposition in Canada is quasi-judicial in nature. The goal of an opponent in a trademark opposition in Canada is to have the Registrar refuse the application for registration of a trademark by an applicant.

Stages of a Trademark Opposition

A trademark opposition is quasi-judicial in nature and the stages are as follows:

1. Pleadings;
2. Evidence;
3. Written Representations (Optional);
4. Hearing (Optional); and
5. Decision.

Pursuant to the Trademarks Act, any decision of the Registrar in a Trademark Opposition is appealable to the Federal Court within two months from the date on which notice of the decision was dispatched by the Registrar or within such further time as the Court may allow, either before or after the expiration of the two months.

Grounds of Opposition

A trademark opposition can be based on the following grounds:

1. the application does not conform to various requirements;
2. the application was filed in bad faith;
3. the trademark is not registrable;
4. the applicant is not the person entitled to registration of the trademark;
5. the trademark is not distinctive;
6. the applicant was not using and did not propose to use the trademark in Canada in association with those goods or services; or
7. the applicant was not entitled to use the trademark in Canada in association with those goods or services.

The above grounds of opposition are quite technical in nature. It is recommended that you speak to a trademark lawyer and a licensed trademark agent who represents clients in trademark oppositions in front of the Canadian Intellectual Property Office.

Goal of a Trademark Opposition?

From the perspective of an opponent, the goal of a trademark opposition is to prevent an applicant from obtaining registration of a trademark. There are many reasons why an opponent would want to prevent an applicant from obtaining registration of its trademark application. One reason could be that the applicant is a competitor who will seek to enforce registered trademark rights against the opponent once those rights are secured.

From the perspective of an applicant, the goal of a trademark opposition is to secure registered trademark rights in Canada.

From the perspective of both the applicant and the opponent, a trademark opposition in Canada provides a streamlined and more cost-effective way of dealing with disputes regarding securing registered trademark rights in Canada. Although, ultimately, the final decision lies with the Federal Court on appeal.

How Can SLC Law Assist with a Trademark Opposition in Canada?

At SLC Law, our trademark lawyer and licensed Canadian trademark agent have experience with trademark oppositions in Canada. Call today to speak to a trademark lawyer and trademark agent about trademark oppositions.

Disclaimer: All materials contained on this website should not be construed or relied upon as legal advice. The content of the SLC Law website is provided to you for informational purposes only and should not be construed as legal or other advice on any subject matter. Contact a lawyer or other professional for advice regarding your particular circumstances.