Trademarks Act

Marginal note:Statement of opposition

• 38 (1) Within two months after the advertisement of an application for the registration of a trademark, any person may, on payment of the prescribed fee, file a statement of opposition with the Registrar.

• Marginal note:Grounds

  (2) A statement of opposition may be based on any of the following grounds:

  • (a) that the application does not conform to the requirements of subsection 30(2), without taking into account if it meets the requirement in subsection 30(3);

  • (a.1) that the application was filed in bad faith;

  • (b) that the trademark is not registrable;

  • (c) that the applicant is not the person entitled to registration of the trademark;

  • (d) that the trademark is not distinctive;

  • (e) that, at the filing date of the application in Canada, determined without taking into account subsection 34(1), the applicant was not using and did not propose to use the trademark in Canada in association with the goods or services specified in the application; or

  • (f) that, at the filing date of the application in Canada, determined without taking into account subsection 34(1), the applicant was not entitled to use the trademark in Canada in association with those goods or services.

• Marginal note:Content

  (3) A statement of opposition shall set out

  • (a) the grounds of opposition in sufficient detail to enable the applicant to reply thereto; and

  • (b) the address of the opponent’s principal office or place of business in Canada, if any, and if the opponent has no office or place of business in Canada, the address of his principal office or place of business abroad and the name and address in Canada of a person or firm on whom service of any document in respect of the opposition may be made with the same effect as if it had been served on the opponent himself.

• Marginal note:Frivolous opposition

  (4) If the Registrar considers that the opposition does not raise a substantial issue for decision, he shall reject it and shall give notice of his decision to the opponent.

• Marginal note:Substantial issue

  (5) If the Registrar considers that the opposition raises a substantial issue for decision, he shall forward a copy of the statement of opposition to the applicant.

• Marginal note:Power to strike

  (6) At the applicant’s request, the Registrar may — at any time before the day on which the applicant files a counter statement — strike all or part of the statement of opposition if the statement or part of it

  • (a) is not based on any of the grounds set out in subsection (2); or

  • (b) does not set out a ground of opposition in sufficient detail to enable the applicant to reply to it.

• Marginal note:Counter statement

  (7) The applicant shall file a counter statement with the Registrar and serve a copy on the opponent in the prescribed manner and within the prescribed time after a copy of the statement of opposition has been forwarded to the applicant. The counter statement need only state that the applicant intends to respond to the opposition.

• (7.1) [Repealed, 2014, c. 20, s. 343]

• (7.2) [Repealed, 2014, c. 20, s. 343]

• Marginal note:Evidence and hearing

  (8) Both the opponent and the applicant shall be given an opportunity, in the prescribed manner and within the prescribed time, to submit evidence and to make representations to the Registrar unless

  • (a) the opposition is withdrawn or deemed under subsection (10) to have been withdrawn; or

  • (b) the application is abandoned or deemed under subsection (11) to have been abandoned.

• Marginal note:Service

  (9) The opponent and the applicant shall, in the prescribed manner and within the prescribed time, serve on each other any evidence and written representations that they submit to the Registrar.

• Marginal note:Deemed withdrawal of opposition

  (10) The opposition is deemed to have been withdrawn if, in the prescribed circumstances, the opponent does not submit and serve either evidence under subsection (8) or a statement that the opponent does not wish to submit evidence.

• Marginal note:Deemed abandonment of application

  (11) The application is deemed to have been abandoned if the applicant does not file and serve a counter statement within the time referred to in subsection (7) or if, in the prescribed circumstances, the applicant does not submit and serve either evidence under subsection (8) or a statement that the applicant does not wish to submit evidence.

• Marginal note:Decision

  (12) After considering the evidence and representations of the opponent and the applicant, the Registrar shall refuse the application, reject the opposition, or refuse the application with respect to one or more of the goods or services specified in it and reject the opposition with respect to the others. He or she shall notify the parties of the decision and the reasons for it.