CANADA Law and Practice Contributed by: Casey Chisick, Steven Kennedy, Karen MacDonald, Jessica Zagar, Dian Howard and Steven Henderson, Cassels Brock & Blackwell LLP
cannot be brought more than five years after the registration of the subject mark, unless the challenger can establish that the regis - trant knew of the third-party mark when they first adopted the subject mark. Copyright The Federal Court may, on application of the Registrar of Copyrights or of any interested per - son, rectify the register: • to add an entry wrongly omitted; • to expunge an entry wrongly made or remain - ing; or • to correct an error or defect. 5.3 Ability to File an Opposition or Revocation/Cancellation Trade Mark Any person may file an opposition to a trade mark application as long as they rely on at least one of the grounds of opposition described above. Legal representation is not mandatory in an opposition, although it is highly recommend - ed given the complexity of many proceedings. An opponent must pay a fee of CAD1,085.76 to file a statement of opposition and an additional CAD150 per extension of time requested. Legal fees associated with an opposition proceeding can vary significantly based on the complexity of the file and the amount of evidence involved. A Section 45 summary cancellation proceeding can be initiated at the request of “any person”, whereas a Section 57 proceeding can be initi - ated at the request of “any interested person”, which includes anyone whose present or future rights or commercial interests may be affected by the registration. In practice, this is a relatively low threshold.
Additionally, the Registrar of Trademarks may commence a Section 45 summary cancellation or a Section 57 expungement proceeding on its own initiative. Copyright The Registrar of Copyrights or any “interested person” may bring an application to expunge an entry from the register. 5.4 Opposition or Revocation/ Cancellation Procedure Trade Mark The standard opposition procedure in Canada includes the following stages: • Pleadings – the opponent commences the opposition by filing a statement of opposition. If compliant with legislative requirements, the statement of opposition is forwarded to the applicant, who then serves and files a counterstatement confirming the applicant’s intention to respond. • Evidence – each party can submit evidence in support of their position, typically in the form of affidavits or statutory declarations. The opponent files first, followed by the appli - cant, after which the opponent can choose to submit reply evidence. There is no formal documentary discovery, but each party can request an order to cross-examine the other party’s affiants or deponents. On April 1, 2025, new provisions will come into force permitting a party to request that the Trade - marks Opposition Board issue a confidential - ity order for certain commercially-sensitive or protected information. Based on the avail - able practice notice, it is expected that the Trademarks Opposition Board’s approach to confidentiality orders will largely mirror that of the Federal Court of Canada, and this is a welcome development as, previously, all
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