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OPPOSITION PROCEEDINGS Cynthia Rowden Bereskin & Parr

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OPPOSITION PROCEEDINGS Cynthia Rowden Bereskin & Parr OPPOSITION PROCEEDINGS Cynthia Rowden Bereskin & Parr September 2008 The author wishes to acknowledge the many students at Bereskin & Parr who have contributed to the updating of this paper over the years. © 2008 Bereskin & Parr Bereskin & Parr 40 King Street West, 40th Floor, Toronto, Ontario, Canada M5H 3Y2 Phone: 416-364-7311 Fax: 416-361-1398 www.bereskinparr.com TABLE OF CONTENTS OPPOSITION PROCEEDINGS............................................................................ 3 I INTRODUCTION: A REVIEW OF THE STEPS IN AN OPPOSITION........................................................ 3 II PREPARING THE STATEMENT OF OPPOSITION ............................................................................... 5 1. Selecting the Grounds of Opposition.................................................................................... 5 a) Non-compliance with Section 30......................................................................................................5 i) Section 30(a): Identification of Goods and Services .........................................................................6 ii) Section 30(b) ....................................................................................................................................10 (a) Selecting the Correct Date of First Use .....................................................................................10 (b) Applicant’s or Licensee’s Use of the Trade-mark......................................................................14 (c) Use “as a Trade-mark”................................................................................................................16 (d) Variations of the Trade-mark ......................................................................................................16 iii) Section 30(e): Improper Reliance Upon “Proposed Use” as a Basis of Application....................19 v) Section 30(h): Accurately Representing the Trade-mark in the Application................................20 vi) Section 30(i): Satisfaction of Entitlement to Use the Trade-mark.................................................22 b) Non-registrability ..............................................................................................................................27 i) Section 12(1)(a): Surname of an Individual...................................................................................27 ii) Section 12(1)(b): Clearly Descriptive or Misdescriptive...............................................................29 iii) Section 12(1)(c): Generic Trade-marks .......................................................................................31 iv) Section 12(1)(d): Confusion .........................................................................................................31 v) Section 12(1)(e): Prohibited by Sections 9 or 10 .........................................................................32 c) Non-entitlement................................................................................................................................34 d) Non-distinctiveness..........................................................................................................................35 2) Relevant Dates..................................................................................................................... 36 a) Section 30.........................................................................................................................................36 b) Entitlement .......................................................................................................................................38 c) Registrability .....................................................................................................................................38 d) Distinctiveness .................................................................................................................................41 3) Pleading all Relevant Grounds ........................................................................................... 42 a) Can Opposition Board Only Decide Opposition on the Basis of Pleadings?................................42 b) Parties Cannot Raise New Grounds of Opposition Except Pursuant to Pleadings .....................42 4) Grounds Must be Pleaded to Sufficiently Permit an Applicant to Reply .......................... 43 a) The Grounds of Opposition must be Pleaded Completely ............................................................43 b) Cases on Sufficiency of Pleadings..................................................................................................44 5) Amending the Statement of Opposition ............................................................................. 48 III DRAFTING THE EVIDENCE........................................................................................................... 50 1) Form and Content of Affidavits ........................................................................................... 50 2) Time Limits ........................................................................................................................... 54 3) Onus of Proof and Evidentiary Burden............................................................................... 57 4) Agreements and Other Proceedings .................................................................................. 59 5) Hearsay and Other Evidentiary Defects............................................................................. 61 6 Proving the State of the Register........................................................................................ 68 7) Use of Internet Searches of Trade-marks Office Databases............................................ 70 8) Marketplace Use .................................................................................................................. 72 9) Similar Business Names and Domain Names ................................................................... 74 10) Other Internet Searching ..................................................................................................... 75 11) Proving Meaning .................................................................................................................. 76 12) The Significance of Use / Registration in Other Jurisdictions........................................... 78 13) Foreign Decisions ................................................................................................................ 80 14) Relevance of Surrounding Circumstances......................................................................... 80 IV FILING NEW EVIDENCE ON APPEAL ........................................................................................... 82 3 OPPOSITION PROCEEDINGS I Introduction: a Review of the Steps in an Opposition The procedure and rules for opposition are found in the Trade-marks Act (the “Act”) (s. 38), in the Trade-marks Regulations (Rules 35 to 47), and also in Practice Notices issued periodically by the Trade-marks Office. An opposition cannot begin until a trade-mark has been advertised for opposition in the Trade-marks Journal, published weekly by the federal government. Once advertised, the opposition must be filed within two months (s. 38(1)/Rule 38), although the opponent may obtain permission for an extension. Care should be taken to ensure that extension of time requests are made in a timely fashion, are properly addressed to the attention of the Opposition Board and that the request is received by the Trade-mark Office. Particular care also needs to be taken with calculation of deadlines, given the recent amendments to the Regulations, which change some opposition terms, but only for oppositions to applications advertised from October 1, 2007. There are accordingly two separate sets of deadlines depending on the advertisement date of the application. According to Section 38, there are four possible grounds of opposition: i) non-compliance with Section 30; ii) non-registrability, referring to all of the factors in Section 12(1), including name or surname, descriptiveness, confusion with a registered trade-mark or marks that are contrary to Section 9 or 10; iii) non-entitlement, referring to prior use or making known of a confusingly similar trade-mark or trade name, or to a confusing trade-mark in a previously filed trade-mark application; and iv) non-distinctiveness The statement of opposition is filed with the Opposition Board of the Trade-marks Office, which reviews the statement to ensure that it raises at least one valid ground of opposition (s. 38(5)). The opposition is then forwarded to the applicant’s agent who has two months (s. 38(6)/Rule 39), which can be extended, (s. 47(1)) to file a counter statement.1 This deadline, along with other initial deadlines in the opposition process have recently been lengthened by amendments to the Trade-marks Regulations. In most cases, the counter statement is simply a denial of the grounds of opposition. The applicant also has 1 Consult the Practice Notice effective October 1, 2007 for applications advertised before October 1, 2007. 4 the opportunity to challenge the grounds of opposition or the sufficiency of the pleadings, by submitting that the statement of opposition is deficient, in which case the Opposition Board will give the opponent the chance to rectify the pleading issues, or will order that all or certain provisions in the Statement of Opposition be struck out. This procedure,
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