Canadian Trade Marks Opposition Board – 2018 Decisions – By-the-Numbers Part 3 – Opposition Decisions

As discussed in our two previous post on the decisions of the Trade Marks Opposition Board (TMOB), in 2018, the Board decided 82 opposition proceedings in 2018.  Overall, opponents succeeded in 60% of these decisions.

When considering the grounds of opposition relied upon by opponents in these proceedings, only about 1/3 of all opposition decisions did not include a ground of opposition based on Section 12(1)(d) of the Trade-marks Act. That is, the opponent owned a registered trademark it alleged was confusing with the proposed trademark application in 2/3 of all the decided opposition proceedings.

Where the opponent did not include a Section 12(1)(d) ground of opposition, the outcomes were evenly split between the application being refused as compared with the cases in which the opposition was rejected.

In contrast, when there was a registration being relied upon by the opponent, in over 60% of the cases the opponent was successful.

Turning next to the filing of the opponent’s opposition evidence, in only 16% of the decided cases,  the opponent did not file any evidence. In 100% of these cases, the opponent failed and the opposition was rejected. Where the opponent did file evidence, it was twice as likely that the TMOB would either partly or fully refuse the trademark application than it was to reject the opposition.

In terms of the applicant’s evidence, where no evidence was filed by an applicant, in over 75% of such cases, the opponent succeeded in having the application refused. Where the applicant did file evidence, the applicant succeeded about 50% of the time.

In the three cases where the opponent filed no evidence, and the applicant filed evidence, in all of these cases the opposition was rejected.

In the 23 cases where the opponent filed evidence and the applicant did not file any evidence, the chance of an application being refused was 10 times greater than the chances that the opposition was rejected.

In the two cases where the opponent and the applicant both elected not to file evidence, in both cases the opposition was rejected.   

Where the opponent and the applicant both filed evidence, it was two times more likely for the application to be refused, than for the opposition to be rejected.

Both parties have the opportunity to conduct cross-examinations on any affidavit filed by the other party. However, in 2018, cross-examinations were conducted in only 18% of all cases. Where cross-examinations were conducted, the opponent succeeded in 80% of such cases.

Turning to the written argument phase, In most opposition proceedings decided in 2018, both parties filed written submissions. There were very few cases in which neither party filed a written argument. Where only one argument was filed, the opponent was more likely than the applicant to file a written argument.

In cases where only the applicant filed a written argument, the chances were slightly higher that the opposition would be rejected than that the application would be refused. Where both parties filed written arguments, the chances were roughly even that the opposition would be rejected or the application would be refused. Where only the opponent filed a written argument, it was four times more likely that the application would be refused than that the opposition would be rejected. Where neither of the parties filed written arguments, the application was refused in over 80% of the decided cases.

The final stage of an opposition proceeding is an oral hearing. In roughly 50% of the decided cases, both parties attended an oral hearing. In just over a third of all cases, no oral hearing was held. In just over 15% of all cases, only the opponent attended an oral hearing.

In 2018, there was only one case where only the applicant attended an oral hearing, and in that case, the applicant was successful. Where no hearing was held, it was over two times more likely that the application would be refused than that the opposition would be rejected. If only the opponent attended the hearing, the opponent was three times more likely to succeed in the opposition.  Where both parties attended an oral hearing, the opposition was successful about half the time, and the opposition was rejected in the other half of the cases.

When looking at the totality of the TMOB opposition decisions for 2018 from the perspective of the opponent, it appears to be essential for an opponent to file evidence in order to be successful in the opposition.  It also appears clear that an opponent can increase its chances of success by conducting cross-examinations of the applicant’s evidence in appropriate circumstances.  Our survey also suggests that it is extremely important that an opponent file a written argument, and the chances of success for an opponent are also elevated if the opponent attends an oral hearing.

From the perspective of a trademark applicant whose application is opposed, it appears to be very important for the applicant to file evidence in support of the application in order to maximize the chances of the opposition being rejected.  The filing of a written argument also appears to be very advantageous for an applicant, and if an oral hearing is requested by the opponent, and the applicant needs to make a decision as to whether to attend the hearing, our review of the 2018 outcomes suggests that the applicant’s chances are higher if the applicant also attends the hearing.

In our upcoming posts, we will discuss the most noteworthy decisions issued by the TMOB in 2018.