Trade-mark Opposition Proceedings

Trade-mark applications in Canada, once accepted by the relevant trade-mark office, are open to opposition by third parties. In Canada, any person is entitled to start an opposition to a trade-mark, provided that such person relies on at least one of the grounds of opposition set out in Section 38 of the Trade–marks Act


Grounds of Opposition


Unlike in other jurisdictions, an opponent in a Canadian opposition may rely upon both technical and substantive grounds. As a result, mistakes made during filing frequently form the basis of oppositions.

There are four possible grounds of opposition in Canada:

i) non-compliance with Section 30 of the Trade-Mark Act (pertaining to technical deficiencies in the application);

ii) non-registrability of the trade-mark as set out in Section 12(1) of the Trade-Mark Act, including name or surname, descriptiveness, confusion with a registered trade mark, or marks that are contrary to Sections 9 or 10 of the Trade-Mark Act;

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 as it may be confusing with a previously used trade-mark or trade name or a registered trade mark or it may be clearly descriptive or generic, and therefore not a trade mark or it may be a term that has developed a trade meaning.

At Sodagar & Company, we recognize how invaluable your trade-mark can be, therefore we will prosecute or defend your trade-marks at opposition proceedings. Please contact us to see how we can assist you with your trade-mark needs.

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