The Trade-marks Opposition Board (“TMOB”) is an administrative tribunal that hears oppositions to Canadian trade-mark applications. If you are opposing a trade-mark application in Canada, or if your Canadian trade-mark application is being opposed, here are some details on what to expect:
1. The Pleadings – Oppositions are typically initiated by a statement of opposition – a document filed on behalf of the opponent that sets out the particular grounds of opposition that are being relied on. A trade-mark agent or lawyer is typically needed to properly draft and file this document. Once the trade-mark applicant has received the statement of opposition, it’s their turn to file a counter statement, which typically would deny the allegations contained in the statement of opposition.
2. The Evidence –The parties then have an opportunity to file evidence with the Board. There are important rules and deadlines in terms of when parties file their evidence. Evidence is typically submitted by way of affidavit evidence, and each party is given an opportunity to cross-examine the individual affiants. Think Tom Cruise and Jack Nicholson in A Few Good Men. Okay, it’s a trade-mark dispute so it may not be that dramatic – but it’s your opportunity to really question the other party’s evidence.
3. The Written Submissions – Once the evidence has been filed and the cross-examinations have been completed, the parties now have an opportunity to file written submissions in support of their argument. The submissions will refer to the pleadings and the evidence in great detail, as each party tries to advocate for their position.
4. The Oral Hearing – Finally, each party has an opportunity to “make their case” before the Trade-marks Opposition Board. Not only do you get to marvel at the retro architecture of the Place du Portage buildings in Gatineau, and wear stylish white “VISITORS” stickers, but this is where you can look the Board in the eye and make your most passionate argument. In some cases, it really helps to get in front of the Board and emphasize and expand on a few of your key points. In other cases, you may find yourself simply repeating arguments already sufficiently made in the written submissions – this should be avoided!
After the hearing, the Board will typically reserve its decision. A formal written decision is then issued by the Board some time after the hearing. The entire process can take anywhere from two to four years or longer. Keep in mind that stages 2, 3, and 4 are optional. You do not have to file evidence or written submissions, or request an oral hearing. With that said, if you don’t present anything to the Board beyond your initial pleadings, it will generally be very difficult to establish your arguments.
Although the proceeding is designed to be user-friendly, there are many technical details and if you are initiating an opposition, or if your mark is being opposed, it is strongly recommended that you retain the services of a qualified trade-mark agent or lawyer.
Paul W. Braunovan is a member of the Intellectual Property Group at Perley-Robertson, Hill and McDougall LLP/s.r.l. He may be reached at 613.566.2834 or at firstname.lastname@example.org.