This month we turn to a new topic. Introductory comments about trade oppositions follow.
A trademark owner must vigilantly monitor the marketplace to make sure the distinctiveness of its mark is not being diminished by the use or potential use of other trademarks which are confusing with it. One way this can be done is to monitor the applications advertised in the Trade-marks Journal, which is available online. However, monitoring by a watch service is preferable.
Trademark opposition proceedings can be an effective tool to protect the distinctiveness of a brand against encroachment by third parties. However, if there are concerns regarding the validity of a registration to be relied on by an opponent, it may not be wise to institute a trademark opposition which will expose the registration to scrutiny. It is also prudent to carry out searches of other marks owned or applied for by the applicant since they may affect the decision to oppose.
Within two months from the advertisement of an application, any person may, upon payment of the required fee, file a statement of opposition with the Trademark Opposition Board. A proposed opponent need not show they would be adversely affected by registration. The effect of beginning an opposition is to bring the prosecution of the opposed application to a halt until the opposition is concluded.
An extension of the time to file the statement of opposition may be requested before or, sometimes after the expiration of the above limit. The timely request for an extension is a practical step as it will provide some time for the proposed parties to consider settlement.
An extension applied for after the expiration of the time limit or the time extended by the Registrar of Trademarks will not be granted unless the Registrar is satisfied that the failure to do the act or apply for the extension within that time or the extended time was not reasonably avoidable.
The Registrar may, within three months after the registration of a trademark, remove the registration from the register if the Registrar registered the trademark without considering a previously filed request for an extension of time to file a 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.
A version of this article originally appeared in the Law360 Canada published by LexisNexis Canada Inc.
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