Approval to Registration

Approval to Registration

It normally takes about four months to move an application along from approval for publication to issuance of a Notice of Allowance. Depending on the circumstances, that can mean that a registration certificate can also issue right away. It may take longer, however, if the application was based solely on proposed use, and use has not yet occurred.

APPROVAL AND PUBLICATION

Once the Trademarks Office is satisfied with the application, a Notice of Approval will be issued for its publication in the Trademarks Journal. After the application is published, any party has two months to file an opposition.

OPPOSITIONS

If there is an opposition, any further action on the application is suspended until the opposition is resolved.

The opposition process begins with a Statement of Opposition, clearly stating the grounds upon which the Opponent intends to rely. The Applicant then files a Counterstatement, essentially denying the Opponent’s claims. The Opponent must then submit its evidence, which is done by a sworn affidavit. The Applicant has an opportunity to cross-examine on this affidavit. The Applicant then files its evidence, also by affidavit. This is also subject to cross examination. Finally, the Opponent can also file evidence in reply.

The matter is then set down for a hearing before the Trademarks Opposition Board, after which a decision is rendered. Appeals are available to the Federal Court of Canada.

An opposition proceeding can be expensive and long, often taking two to five years or more until decision. It should be noted that in opposition proceedings the onus is on the Applicant to prove that its application is not confusing, should confusion be raised as a ground.

REGISTRATION AND TERM OF REGISTRATION

The Trademarks Office issues a registration and a certificate. The current term for a registration is ten (10) years.