This month we continue to discuss trade oppositions and will deal with the evidentiary framework.
Both the opponent and the applicant are given an opportunity to submit evidence to the Registrar. Within four months after the service of the counter statement, the opponent must file with the Registrar its evidence, by way of affidavit or statutory declaration or certified copies of documents or entries from the register, the opponent is relying on to support the opposition and serve the applicant with a copy of this evidence or statement. The opposition will be deemed to have been withdrawn if the opponent submits neither evidence nor a statement that it does not wish to file evidence.
If evidence or the statement is filed and served by the opponent, the applicant has a similar time within which to file evidence supporting its application or a statement that it does not wish to file evidence and must serve the opponent with a copy of this evidence or the statement. The application will be deemed to have been abandoned if the applicant submits neither evidence nor the statement.
Within one month after service upon the opponent of the applicant’s evidence, the opponent may file with the Registrar evidence strictly confined to matters in reply and serve the applicant with a copy of the evidence.
In opposition proceedings, there is an initial onus on the opponent to establish the facts to support the grounds of opposition on which it relies. In addition, subsection 16(5) of the Act states that the right of an applicant to secure a registration is not affected by the previous use or making known of a mark of another if the mark was abandoned at the date of the advertisement of the applicant’s application. This means that an opponent who wishes to rely on previous use of its mark(s) must show such previous use and that it had not abandoned the use of its mark(s) on the date of the advertisement of the applicant’s application. The subsection is based on abandonment and is not determined solely by the fact that the opponent may have ceased use of its mark.
Once the opponent satisfies its evidentiary burden, the onus of proof is on the applicant to satisfy the Registrar that the trademark ought to be registered. This is a constant onus and includes the onus, where appropriate, of showing that confusion is unlikely. To allow an application, the Registrar must be reasonably satisfied that, on the balance of probabilities, the applied-for mark is unlikely to create confusion.
More comments concerning the evidence to be filed will follow.
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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