Key issues relating to decisions and appeals in trademark opposition proceedings.

The time taken by the Registrar to render a decision will vary. In most cases, decisions are issued within four months following the hearing.

Currently, the Registrar does not have the authority to award costs to a party. However, in the next year an amendment to Canada’s trademarks legislation will likely come into force that gives the Registrar the authority to impose payment of costs. Based on recent indications, costs would only be available in certain circumstances, such as if: a trademark application is refused on the ground that it was filed in bad faith; a party requests a hearing and then withdraws their request less than two weeks prior to the scheduled hearing date; or, a party engages in unreasonable conduct which causes undue delay, complexity or expense in a proceeding, among other circumstances.

Yes. Either party can appeal a decision of the Registrar in an opposition proceeding. Appeals are made to the Federal Court of Canada. Appeals must be filed within two months of from the date of the notice of the decision, or within such extended time as the Federal Court may permit.

The Federal Court of Canada will apply appellate standards when reviewing decisions of the Registrar. Questions of law will be determined under a standard of correctness. Questions of fact or mixed fact and law will be determined under a standard of palpable and overriding error. If the parties provide material new evidence on appeal, then the Federal Court will hear the case de novo, on a correctness standard.

Currently, it is possible to file new evidence on appeal. However, in the next year, an amendment to Canada’s trademarks legislation will likely come into force that will require parties to obtain permission from the Federal Court of Canada before filing new evidence.

Yes. Decisions of the Registrar in opposition proceedings on the merits are published online. However, not all decisions are published online. Generally speaking, interlocutory or purely procedural decisions are not. Decisions of the Registrar are made available on the Registrar website (https://decisions.opic-cipo.gc.ca/tmob-comc/decisions/en/nav_date.do).