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The Burden of Proof in Trademark Disputes

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You have established your business, created a unique brand and have earned goodwill with your goods or services. You now feel that it is time to apply to register your trademark as a nearby competitor has started to create a brand that is similar to yours.

Unfortunately, your competitor has filed a trademark application before you and when you proceed to file your trademark application, it is refused because it is confusingly similar to your competitors! Wait a minute, you have been using your trademark longer than your competitor – shouldn’t you have the right to registration?

The Canadian Intellectual Property Office takes the position that the entitlement to registration is based on the filing date of the trademark application for confusingly similar trademarks. So even though you are the rightful owner of the trademark, you are now in a position where you have to bear the burden of proving that you are entitled to the registration of your trademark and your competitor is not. This will result in you having to prepare a Statement of Opposition against the registration of your competitor’s trademark and providing evidence that you are the actual party entitled to the registration of your trademark.

This process actually unrolls in a two part process where you are (i) needing to file for extensions to respond to the examiner’s report that advises that your trademark is not registrable due to it be confusingly similar to your competitors; and (ii) needing to comply with the documentation and evidence deadlines set forth in the opposition proceeding.

Accordingly, once you decide on a brand for your goods or services, it is important to file your trademark as soon as possible in order to avoid putting yourself in a position of defence for the registration of your trademark.