02/07/2020

1) Trademarks: Oppositions
Liz Afolabi

What is an opposition proceeding?

• A trademark opposition is a proceeding commenced

before the Registrar of Trademarks to prevent the
registration of a trademark in Canada
• Importantly, a successful opposition does not prevent
the applicant from using their proposed trademark in
Canada
• To stop someone from using their trademark, you must
seek recourse through the courts “Trademark Infringement lawsuit”.
• Oppositions play an important role in maintaining
distinctiveness of a registered trademark

this is a proceeding that is launched against a pending application. Once you file your application
your application will be advertised for opposition purposes. During that two month opposition
period that is when an opposition can be filed. SO the opponent is someone who is trying to stop
you from obtaining your registration certificate.
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Oppositions

• Expensive ($15k +) but cheaper than Court

• Section 38 Opposition Proceeding:
– Goal is to stop someone from obtaining a trademark
registration
– Limited time period for filing a Statement of
Opposition – call lawyer asap!
• S. 38(1) – w/in 2 months after the advertisement of an
application
• Although you can obtain extensions of time to file
Statement of Opposition
There is an option if you do find out about an application that has been advertised but perhaps
you do not have enough time to fully assess your situation, it might be best to request the
extension of time rather than try to rush forward with a false statement of opposition.

Oppositions

• In your Statement of Opposition, you must indicate why

you think the application should not be allowed to
proceed to registration
• “Grounds of Opposition” s. 38(2)(a)-(f)
– Examples:
• You think the applied-for trademark is not distinctive;
• You think the applied-for trademark is not registrable
because it is confusing with another trademark;
• You think the application was filed in bad faith;
• Etc.
you need to indicate which application you are opposing and you need to state your grounds, your basis for opposition

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Steps in an Opposition Proceeding

Applicant is the person of company that has filed the
trademark application and the opponent is the person or
• Opponent versus the Applicant company that is opposing the application, the party that want
to stop the application from proceeding to registration.
Step 1 • Statement of Opposition (filed by the opponent)
– Grounds of opposition
– Sufficient detail to enable applicant to reply
– Frivolous oppositions could be rejected
Step 2 • Counterstatement
– Filed by applicant
– The applicant states that their application is
registrable and the applicant denies all of the
opponent’s grounds of opposition

Steps in an Opposition Proceeding

Step 3 • Both parties file evidence
– Website printouts
– Photos of product packaging
– Photos of sales uniforms
– Evidence of marketing and branding efforts
– Marketing & advertising sales
– Evidence of third party confusing marks
– Evidence is in the form of an affidavit, sworn by the
person with the most knowledge about the company

Opponent file the evidence first. So the opponent will want to list all types of evidence that will support their grounds of
opposition, if they do not include any evidence to support their ground of opposition then that ground of opposition could
be struck by the hearing officer.

After the opponent the applicant will file his evidence, the applicant will have to show that despite the opponents evidence the 3
applicants mark is still registrable. ( Basically he has to file evidence that refutes the grounds of opposition raised by the
opponent or evidence that refutes or rebuts his evidence.
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Steps in an Opposition Proceeding

Step 4 • Written arguments
– Both parties file written factum-style arguments that
explain their position, the facts, the case law
– Legal brief, 20-30 pages
– Well written document Proper case law

Step 5 • Oral arguments (optional)

– Present orally before a Hearing Officer

– By telephone It is also important to note that at any time during this proceeding the parties
can settle, if they decide to settle and they negotiate and they agree on some
settlement terms then they can simply notify the trademarks opposition
– In person board that the opposition has been settled, then they do not have to continue
with the rest of the steps.

Steps in an Opposition Proceeding

Time to Settle
Step 6 • Onus of proof
– Initial onus on opponent to establish the FACTS to
support the grounds of opposition
– Then onus shifts to applicant to satisfy the Registrar
that the trademark ought to be registered
If the opponent is unable establish that their grounds of opposition have been supported
by evidence or sufficient facts then their opposition will fail.

However if they do meet their onus, then the onus will shift to the applicant, and then it is
on the applicant to satisfy the registrar that the trademark ought to be registered, that
despite anything the opponent said the mark is still register-able .

So when the hearing officer is in the process of making the decision he will see and
determine if the parties have met their onus of proof. Once the hearing officer makes his
decision it will be emailed to the parties

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Steps in an Opposition Proceeding

Step 7 • Appeal to the Federal Court within two months from the
date of the decision
– In the absence of new evidence, standard of
reasonableness
• Was the Hearing Officer’s decision reasonable?
• Harder to overturn the decision If officer’s decision is reasonable

– If new evidence, having a material effect, standard of

correctness of the Registrar’s decision
• Was the Hearing Officer’s decision correct, in light of the new
evidence?
• Somewhat easier to overturn the decision

if you are going to appeal and opposition decision then it always wise to file new evidence before the
federal court so that you can obtain the standard of correctness which will make it a little bit easier for you
to overturn that opposition decision

Gemological Institute of America Inc v

Gemology Headquarters International LLC
Example of TM board decision
• Opponent = GIA
• Applicant = GHI
• Gemology Headquarters International applied to use the
mark GHI in association with grading of diamonds, along
with other g/s
• TMOB: was there a likelihood of confusion with
Gemological Institute of American’s trademark for GIA?

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Gemological Institute of America Inc v

Gemology Headquarters International LLC
• TMOB: was there a likelihood of confusion with
Gemological Institute of American’s trademark for GIA?
– NO confusion Allowed

– The trademarks in issue lacked distinctiveness

– Consisting only of initials = WEAK trademarks

Gemological Institute of America Inc v

Gemology Headquarters International LLC

• FC: appeal allowed; application refused

– The otherwise weak GIA marks acquired
distinctiveness; mark used for decades; became well
known
– The marks ARE confusing
• FCA: FC judgement set aside; TMOB decision
reinstated; GHI application ALLOWED
– The marks are not confusing; weak marks; only
comprising initials; went back to the TMOB decision

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U-haul International Inc v U Box It Inc, 2015

• Opponent = U BOX IT
• Applicant = U-BOX WE-HAUL and U-BOX
• TMOB: refused to register two applications
– U-BOX WE-HAUL and U-BOX (applicant’s marks)
• Moving and storage services
– U BOX IT (opponent’s mark)
• Garbage removal & waste management services
– Found there to be a reasonable likelihood of
confusion

U-haul International Inc v U Box It Inc, 2015

• FC: the TMOB decision was reasonable

– Maintained refusal to register the applications
– U-haul tried to file new evidence to show that no
business provides both moving/storage services and
garbage removal/waste management services
– Tried to distinguish the two industries to show that
there were differences in the goods/services and
channels of trade Correct Standard didn’t apply,
Based on reasonable standard
– FC found the new evidence to be insufficient, and it
did not affect the reasoning of the TMOB

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Triangle Tyre Co v Gestion Andre Touchette

Inc, 2019 FC 220

• Applicant = ICELINK and SNOWLINK

– For use with tires
• Opponent = TIRELINK and TIRELINK & Design
– tire and other automotive parts distribution services
• TMOB Decision: opposition was allowed; applications
dismissed; held that ICELINK and SNOWLINK were
confusing with the Opponent’s mark TIRELINK

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Triangle Tyre Co v Gestion Andre Touchette

Inc, 2019 FC 220

• Federal Court: allowed Triangle Tyre’s appeal of the

Registrar’s decision; found there was NO likelihood of
confusion
• Regarding resemblance:
– Yes, all marks included the word LINK, but different
suggested meaning
– IceLink and SnowLink suggest the idea of a link with,
or adherence to, a driving surface in winter conditions
– TireLink did not make any similar suggestion

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Triangle Tyre Co v Gestion Andre Touchette

Inc, 2019 FC 220

• Regarding distinctiveness:
– Applicant was able to demonstrate the use of other
marks containing the word LINK, which served to
reduce the overall distinctiveness of the TireLink mark
– Opponent provided more use of its TireLink
trademark, to show that it had greater acquired
distinctiveness
– FC said that this evidence suggested a finding of
confusion

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Triangle Tyre Co v Gestion Andre Touchette

Inc, 2019 FC 220

• Regarding the nature of the goods/services:

– The Opponent’s marks were for use with services
related to tires (offered services to car manufacturers
and car dealers) = SERVICES
– The Applicant’s marks were for actual tires
(manufacturer) = GOODS
– FC overall concluded that these businesses were
fundamentally different
also resemblance
• Overall, FC found no confusion (b/c of diff in g & s)

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More Examples

• Confusing (b/c g/s different but related)

– PENCIL-MATE (desk accessories) vs PAPER MATE
(writing instruments, ink)
– VICTORIAN (wood trims, mouldings) vs
VICTORIAN (lighting fixtures, fans)
– EARTHRISE (dietary supplements) vs EARTHWISE
(vegetarian food, natural cosmetics)

Reject applicant

More examples

• Not confusing (identical marks but not confusing b/c

different goods)
– LEXUS (cars) vs LEXUS (juice)
– FIRST (perfume, bubble bath) vs FIRST (jewellery)

Accept applicant

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Thank you!
Liz Afolabi
lafolabi@bereskinparr.com

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