Comparative Guides
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Results: 4 Answers
Trademarks
5.
Oppositions
5.1
Can a third party oppose a trademark application?
 
Canada
Yes.

For more information about this answer please contact: Neil Melliship from Clark Wilson LLP
5.2
Who has standing to oppose a trademark application?
 
Canada
Any person may file a statement of opposition, provided that it is founded upon one of the following accepted opposition grounds:

  • The application was filed in bad faith;
  • The application does not meet the formal requirements of the Trademarks Act;
  • The trademark is not registrable;
  • The applicant is not the person entitled to registration of the trademark;
  • The trademark is not distinctive;
  • The applicant was not using or did not intend to use the trademark in Canada in association with the goods or services specified in the application; or
  • The applicant was not entitled to use the trademark in Canada in association with those goods or services.
For more information about this answer please contact: Neil Melliship from Clark Wilson LLP
5.3
What is the timeframe for opposing a trademark application?
 
Canada
The statement of opposition must be filed within two months of the advertisement of the trademark application in the Trademarks Journal. However, it is possible to obtain a three-month extension of time to file the opposition without consent of the applicant.

For more information about this answer please contact: Neil Melliship from Clark Wilson LLP
5.4
Which body hears oppositions?
 
Canada
Oppositions are heard by the TMOB, which manages the proceedings on behalf of the registrar.

For more information about this answer please contact: Neil Melliship from Clark Wilson LLP
5.5
What is the process by which an opposition proceeds?
 
Canada
Any party may file a statement of opposition, along with the prescribed fee, within two months of advertisement in the Trademarks Journal (or five months, if an extension has been obtained). The statement must set out the name and address of the opponent and the grounds of opposition, in sufficient detail to enable the applicant to reply.

If the registrar considers that the opposition does not raise a substantial issue for decision, the registrar shall reject it and give notice of this decision to the opponent. If it does raise an issue, the registrar shall forward a copy of the statement to the applicant.

The applicant has two months to file a counterstatement. Thereafter, both parties shall be given an opportunity to submit evidence and make written and oral representations to the registrar, unless the opposition is withdrawn or the application is abandoned.

For more information about this answer please contact: Neil Melliship from Clark Wilson LLP
5.6
Can the decision on the opposition be appealed? If so, to what body and by what procedure?
 
Canada
Final decisions of the registrar may be appealed to Federal Court within two months of the date on which notice of the decision is dispatched by the registrar.

For more information about this answer please contact: Neil Melliship from Clark Wilson LLP