As we reported in our article on decisions of the Trade Marks Opposition Board for the first six months of 2019, the Board decided 25 trademark opposition decisions from January to June 2019. For the last six months of 2019, the Board decided over twice that number, with 56 decisions in trademark opposition proceedings being released during this time period. The total number of opposition proceedings decided for 2019 is therefore 81, which is roughly the same as 2018, when 82 decisions were issued.

During this time period, opponents prevailed in slightly over half of the cases, whereas applicants were successful in having the opposition rejected in about one-third of all of the decided cases. A partial decision, namely a decision in which the opposition is rejected in respect of some goods or services, and in which the application is refused in respect of other goods or services, made up 14% of the decisions.

In most of the decided opposition cases, evidence was filed by both of the parties (68%) or by the opponent only (30%). There was only one case where evidence was filed by the applicant alone, no cases where neither party filed opposition evidence.

In cases where both parties presented evidence, the opponent prevailed in 57% of the cases, and the applicant prevailed in only 33% of the cases.

In the first half of 2019, cross-examinations were conducted in only 28% of the decided cases, whereas in the second half of 2019, cross-examinations were conducted in 25 out of the 56 issued decisions, a significant increase over the cases in the first half of 2019, and an even more significant increase over 2018, when cross-examinations were conducted in only 18% of all of the cases.

Turning to written arguments, which are filed after the evidence has been filed, in cases where only the applicant filed a written argument, the applicant was successful in 90% of the cases. Where only the opponent filed a written argument, then the opponent succeeded in having the application refused in its entirety, or at least in having some of the goods or services refused, in 100% of those cases.

The final stage of an opposition proceeding in Canada is the oral hearing, and in the cases decided in the second half of 2019, hearings were attended by both parties in 48% of the cases, by the applicant only in 20% of the cases, by the opponent only in 9% of the cases, and by neither party in 23% of the cases. In cases where both parties attended a hearing, the opponent succeeded in roughly 80% of the cases. Where the opponent alone attended a hearing, the opponent also succeeded in roughly 80% of the cases. Where neither party requested that an oral hearing be held, in 77% of the cases the opponent succeeded, or a partial decision was issued.

It is clear that the filing of an opposition represents a significant time investment, and for an opponent whose application is opposed, the application process is considerably delayed. The number of months elapsed from the date of filing of a Statement of Opposition, until the date on which the decision was issued ranged from a low of 31 months to a high of 88 months, with the average number of months being 56.5 months. 9 of the cases had a duration of between 80 and 89 months, which is longer than any of the decisions issued in the first six months of the year.

In only 5 of the cases which were decided during this period of time was either the applicant or the opponent not represented by a trademark agent.

In examining the identities of the parties filing or defending trademark opposition proceedings in Canada, the majority of trademark applicants were based outside of Canada, but a majority of opponents were Canadian-based entities.

A review of the 2019 Trade Marks Opposition Board decisions in opposition proceedings confirms that full participation in the proceedings, through the filing of evidence, conducting cross-examinations, filing of written arguments, and attending at oral hearings, all improve a party’s chances of success.

In upcoming posts, after reviewing the Section 45 decisions of the Trade Marks Opposition Board, we will discuss the most noteworthy decisions issued by the Board from July to December 2019.