This month we continue to discuss trade oppositions.
The grounds of opposition can include the following:
a) The application does not conform to the requirements of subsection 30(2) of the Trademarks Act relating to applications, without considering whether the application meets the requirement to group the goods and services according to the Nice Classification. This will include grounds such as the applicant did not include a statement in ordinary commercial terms of the goods; the applicant did not include a representation or description, or both that permits the trademark to be clearly defined or the applicant did not include the information or statements required for marks with colour claims or non-traditional marks. The fact that an application may not comply with the Nice Classification is not a ground of opposition. The date for determining this ground is the filing date of the application.
(a.1) The application was filed in bad faith. The date for determining this ground is the filing date of the application.
b) The trademark is not registrable. The date for determining grounds relating to registrability is the hearing date.
(c) The applicant is not the person entitled to registration. The date for determining grounds relating to entitlement is the filing date of the application or the date of first use in Canada, whichever is earlier.
(d) The trademark is not distinctive. The date for determining this ground is the date of filing the statement of opposition.
(e) The applicant was not using and did not propose to use the trademark in Canada in association with the goods or services specified in the application, at the filing date of the application in Canada, without considering any claimed priority date, or
(f) The applicant was not entitled to use the trademark in Canada in association with the goods or services specified in the application at the filing date of the application in Canada, without considering any claimed priority date.
The failure to require an applicant to specify a date of first use raises concerns with respect to determining entitlement if use is relevant. An opponent must take care not to assert a claim against a person who has prior use.
It is prudent to consider that a statement of opposition is like a statement of claim in proceedings in the courts. In a statement of opposition, the opponent is required to set forth the grounds of opposition in sufficient detail to enable the applicant to reply.
At the applicant’s request, the Registrar may, at any time before the applicant files a counter statement, strike all or part of the statement of opposition if the statement or part of it.
(a) is not based on any of the grounds set out in subsection (2); or
(b) does not set out a ground of opposition in sufficient detail to enable the applicant to reply to it.
In striking out any portion or all the statement of opposition the Registrar must assume that the facts as stated can be proved and then determine whether it is obvious that the opponent has no reasonable chance of success concerning the matter in issue or alternatively if the opponent has an arguable case.
The above comments apply to opposing domestic applications. Similar considerations apply to opposing protocol applications although there are limitations in this context concerning extending the time for filing a statement of opposition and subsequently amending the statement of opposition.
If you have questions, please contact me at mckeown@gsnh.com
Goldman Sloan Nash & Haber LLP 480 University Avenue, Suite 1600 Toronto, Ontario M5G 1V2 Direct Line: (416) 597-3371 Fax: (416) 597-3370 Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.
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