The Canadian Trade Marks Opposition Board (TMOB) decides 2 different types of trademark proceedings which fall under the jurisdiction of the Canadian Intellectual Property Office, Section 45 non-use proceedings and trademark opposition proceedings.
In 2018, the TMOB issued decisions in 164 cases: 82 Section 45 decisions and 82 opposition decisions.
Section 45 cancellations arise when a third party requests the Registrar of Trademarks to issue a notice to the registered owner of a Canadian trademark registration, requiring evidence to be filed to show that the trademark has been used in Canada in association with all of the goods and services covered by the trademark registration within the last three years. If no evidence is filed, the registration will be cancelled, and the Board will not have to issue a decision. Accordingly, the decisions of the TMOB in Section 45 cancellation proceedings are issued only in those cases where evidence has been filed by the registered owner, and where a negotiated settlement has not been reached which results in a resolution of the proceedings. Accordingly, the decided cases are those in which the registrant has filed evidence, where the registrant may or may not have filed written written representations and may or may not have attended an oral hearing. In addition, the requesting party may or may not have filed written representations and/or attended a hearing.
The TMOB may then issue one of three possible decisions:
1. Maintain the registration in its entirety;
2. Cancel (expunge) the registration in its entirety; or
3. Delete some goods or services from the registration, while maintaining the registration for other goods or services.
In 2018, the Board released 82 decisions in contested section 45 proceedings. In our next blog post, we will review a number of relevant statistics with respect to these 82 decisions.
The second role of the TMOB is to adjudicate trademark opposition proceedings, that is oppositions filed after a trademark application has been approved, by a third party attempting to prevent the registration of the trademark.
Similar to the Section 45 context, if a Statement of Opposition is filed and the applicant does not respond, no decision will be released by the TMOB. Accordingly, opposition decisions will be released by the Board only in cases in which the applicant contests the opposition which has been filed, and no negotiated settlement is reached between the parties.
The opponent and the applicant may file affidavit evidence, may conduct cross-examinations of the opposing party’s evidence, may file written arguments, and may attend a hearing. The decision of the TMOB will be:
1. to reject the opposition in which case the application will be allowed;
2. to refuse the application; or
3. a decision can be made that some goods or services will be deleted from the application, but that the application will proceed to be allowed for the remaining goods or services.
In 2018, the TM will be delivered 82 decisions in opposition proceedings. In a later blog post, we will review in more detail these opposition decisions, which will hopefully assist parties to know the most effective steps to be taken, and how to tell whether the proceedings which have been instituted are likely to be successful.