From January to June 2019, the Trademarks Opposition Board issued decisions in 25 opposition proceedings. This compares to a total of 82 opposition proceedings which were determined by the TMOB in 2018, and it therefore appears that the Board will issue far fewer decisions in 2019 than they did in 2018, unless there is a significant increase in opposition decisions which are released in the second half of the year.
Opponents based their oppositions on grounds which included reliance on an existing Canadian trademark registration in 64% of all of the decided cases, which is nearly identical to the ratio of cases decided in 2018 in which the opponent included a Section 12(1)(d) ground of opposition based on a likelihood of confusion with a confusing trademark registration.
Turning to an examination of the filing of evidence by the parties, evidence was filed by the opponent in almost every case which was decided, and similarly applicants filed opposition evidence in nearly all of the decided cases as well. Both opponents and particularly applicants were therefore filing opposition evidence at a much higher rate in the cases determined in 2019 than had been the case in the 2018 decided cases.
In the 2018 decided opposition cases, cross-examinations were conducted in only 18% of all cases, whereas in the decided cases in 2019, cross-examinations were conducted in 28% of the cases. It therefore appears that this tool has become slightly more commonly used in cases decided this year.
Both parties filed written arguments in over 50% of all of the decided cases. It was more common for either the applicant alone or the opponent alone to file a written argument, than for neither party to file a written argument.
Oral hearings were held in roughly 50% of the decided 2019 opposition cases. This is roughly the same figure which was observed in the 2018 cases. Where an oral hearing was held, in the vast majority of these cases, both parties attended the hearing.
Where no written argument was filed by either party, the application was refused in 100% of these cases. Where a written argument was filed by only the opponent, the application was refused in 4 out of 5 cases.
In considering the decisions reached by the Board in these opposition cases, the trademark application at issue was refused in just over 50% of all of the cases. This is somewhat lower than the 60% success rate by opponents in the opposition proceedings which were determined in 2018. Of the cases in which the opponent was not completely successful in having the application refused, the opposition was rejected three times more often than the cases in which the Board reached a partial decision in which the opposition was successful with respect to some of the goods or services and unsuccessful with respect to other goods or services.
Looking at the representation of parties in opposition proceedings, there were only two cases decided from January to June 2019 in which a party to an opposition was not represented by a trademark agent, in one case the applicant, and in the other case the opponent.
Turning to a consideration of the length of opposition proceedings in Canada, the shortest time from the filing of a Statement of Opposition until the issuance of a decision by the Board was 30 months. The time frame was between 30 and 40 months in approximately 35% of the cases and, and equal numbers of decisions took 40 - 50 months, 50 - 60 months, 60 - 70 months, and over 70 months, with the lengthiest process taking 77 months from the filing of the Statement of Opposition to the date of the decision.
We also reviewed the decisions to determine the number of cases in which the parties were Canadian applicants or opponents. 60% of the applicants involved in the contested opposition proceedings had addresses outside of Canada, and 64% of opponents resided outside of Canada.
As with the 2018 decisions, a review of the Board’s opposition decisions in the first half of 2019 suggests that opponents can increase their chances of succeeding by filing affidavit evidence, filing written arguments, and attending an oral hearing. From the perspective of an applicant seeking to defend its trademark application from an opposition, the evidence presented by these cases also suggests that the filing of opposition evidence, the filing of written arguments, and attendance at it a hearing before the Board all increase the likelihood of an application being maintained.
In our upcoming posts, we will discuss the most noteworthy of the Opposition Board decisions which which were issued by the Trademarks Opposition Board from January to June 2019.