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)
- How much time does it take to obtain a decision from the Registrar?
- Are costs awarded by the Registrar in an opposition proceeding?
- Is it possible to appeal a decision of the Registrar in an opposition proceeding?
- What standard does the Federal Court apply in the context of an appeal of a decision in an opposition proceeding?
- Is it possible to file new evidence on appeal of a decision of the Registrar in an opposition proceeding?
- Are decisions of the Registrar in opposition proceedings
published online?
Q. How much time does it take to obtain a decision from the Registrar?
A. The time taken by the Registrar to render a
decision will vary. In most cases, decisions are issued within four
months following the hearing.
Q. Are costs awarded by the Registrar in an opposition proceeding?
A. Currently, the Registrar does not have the
authority to award costs to a party. However, in the next year an
amendment to Canada's trademarks legislation will likely come
into force that gives the Registrar the authority to impose payment
of costs. Based on recent indications, costs would only be
available in certain circumstances, such as if: a trademark
application is refused on the ground that it was filed in bad
faith; a party requests a hearing and then withdraws their request
less than two weeks prior to the scheduled hearing date; or, a
party engages in unreasonable conduct which causes undue delay,
complexity or expense in a proceeding, among other
circumstances.
Q. Is it possible to appeal a decision of the Registrar in an opposition proceeding?
A. Yes. Either party can appeal a decision of
the Registrar in an opposition proceeding. Appeals are made to the
Federal Court of Canada. Appeals must be filed within two months of
from the date of the notice of the decision, or within such
extended time as the Federal Court may permit.
Q. What standard does the Federal Court apply in the context of an appeal of a decision in an opposition proceeding?
A. The Federal Court of Canada will apply
appellate standards when reviewing decisions of the Registrar.
Questions of law will be determined under a standard of
correctness. Questions of fact or mixed fact and law will be
determined under a standard of palpable and overriding error. If
the parties provide material new evidence on appeal, then the
Federal Court will hear the case de novo, on a correctness
standard.
Q. Is it possible to file new evidence on appeal of a decision of the Registrar in an opposition proceeding?
A. Currently, it is possible to file new
evidence on appeal. However, in the next year, an amendment to
Canada's trademarks legislation will likely come into force
that will require parties to obtain permission from the Federal
Court of Canada before filing new evidence.
Q. Are decisions of the Registrar in opposition proceedings published online?
A. Yes. Decisions of the Registrar in opposition proceedings on the merits are published online. However, not all decisions are published online. Generally speaking, interlocutory or purely procedural decisions are not. Decisions of the Registrar are made available on the Registrar website (https://decisions.opic-cipo.gc.ca/tmob-comc/decisions/en/nav_date.do).
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
