Trademarks Opposition Board Webinars

A1: A statement of opposition is filed by an opponent using CIPO’s online services and, if it is in compliance with section 38(3) and 38(4) of the Trademarks Act (the Act), is forwarded to the applicant by the Registrar.

The statement of opposition is used by the Registrar to complete a provisional refusal based on opposition which is sent to the International Bureau (IB) of the World Intellectual Property Office (WIPO). A copy of this communication is sent to both the applicant and the opponent.

R2: Pursuant to section 125 of the Trademarks Regulations (the Regulations), a retroactive extension of time to oppose a Protocol application can be granted provided it does not extend the opposition deadline by more than four months from the end of the initial two-month advertisement period. Beyond that four months, the Registrar cannot grant an extension of time on request. Retroactive extension requests relating to Protocol applications are otherwise assessed in the normal fashion under section 47(2) of the Act.

A3: If the refusal of an extension of time is appealed to the Federal Court, the Registrar will follow any orders issued by the Federal Court including an order to send the provisional refusal based on opposition (if a statement of opposition has been provided by an opponent).

A4: If the Registrar fails to notify the IB of a provisional refusal within the time limits set out in the Madrid Protocol, the Protocol application will register pursuant to section 132 of the Regulations. Once registered, section 57 of the Act provides that the Federal Court has jurisdiction to order an entry in the register be struck out or amended.

A5: If the IB issues an irregularity that requires information from an opponent to resolve, the Registrar will contact an opponent by mail and email. More information about the procedure for an irregularity issued with respect to a provisional refusal based on opposition may be found here.

A6: Information on how to divide a Protocol application can be found in the Madrid Examination and Procedures Manual - International Trademarks under the Madrid System.

A divided Protocol application benefits from steps taken in relation to the original Protocol application. As such, any ongoing opposition on the original application will be deemed to have been filed against the divisional application and steps taken in that opposition will apply to the divisional application. Further information on the treatment of divisional applications in opposition can be found here.

A7: If the Registrar has not rejected the statement of opposition pursuant to section 38(4) of the Act and the deadline set out in article 5(2)(c) of the Protocol has not yet passed, retroactive extensions of time to oppose a Protocol application remain available provided it does not extend the opposition deadline by more than four months from the end of the initial two-month advertisement period. Retroactive extension requests relating to Protocol applications are otherwise assessed in the normal fashion under section 47(2) of the Act.

A8: An opponent may indicate in the statement of opposition that it only opposes certain goods and services. However, the entirety of the Protocol application will remain in opposition and the provisional refusal based on opposition sent to the IB will be with respect to all of the goods and services for which protection in Canada has been sought. This can be contrasted with some other jurisdictions where partial refusals pertaining to only some of the goods and services are sent.

A9: Similar to a ground of opposition based on the statement of goods and services not appearing in ordinary commercial terms, an opponent may allege that the goods or services specified in the Protocol application are not within the scope of the international registration, notwithstanding that this is something that the Registrar assesses prior to approving an application for advertisement.

A10: If the number for a Protocol application is entered, the correct form will appear to be completed by the opponent.

A11: If no agent is appointed, a section 45 notice will be sent to the current owner of the registration by registered mail. If a trademark agent is appointed, the section 45 notice will be sent to the trademark agent by registered mail.

A12: The Registrar does not have a preference for which of the service methods is used to serve the other party in an opposition proceeding.

A13: Once the application matures to registration, the opponent should request leave to amend its statement of opposition to include a section 12(1)(d) ground of opposition based on the newly-registered registration. More details are provided in the practice notice.

A1: Yes. A statement of opposition may name any number of persons jointly as opponents. You may enter multiple names in the "opponent name" field and separate each by a comma. However, you may only enter one address.

A2: Yes. The Board's e-Services allow for the filing of evidence in colour.

A3: Yes. You will be able to use the same account credentials for both the Trademarks Branch e-Services and the Trademarks Opposition Board e-Services sites.

A4: You may use either the Board's e-Services site or mail to send your correspondence to the Board. You are not restricted to use one method or the other. Using the Board's e-Services will allow your correspondence to reach the Board much more quickly than if sent by regular mail. When submitted through the e-Services , your correspondence is received directly by the Board, whereas, when received by regular mail, your correspondence must go through a number of different channels within CIPO before reaching the Board.