Disputes & Litigation
Disputes - Opposition Proceedings
Trade-mark applications filed with the Canadian Intellectual Property Office can be opposed by any person having standing to start an opposition proceeding and may include a competitor.
An opposition proceeding is an administrative practice before the Registrar of Trade-marks of the Canadian Intellectual Property Office, whereby a third party (Opponent) objects to the registration of a trade–mark in Canada by filing a statement of opposition after the trade-mark application has been advertised in the Trade-marks Journal.
A successful opposition before the Canadian Intellectual Property Office prevents a trade–mark application from issuing to registration.
Our trade-mark opposition services include:
· advising on the likelihood of successfully opposing or defending a trade-mark opposition
· corresponding with the Registrar of Trade-marks
· opposing a trade-mark application by preparing and filing a statement of opposition
· defending a opposition by preparing and filing a counterstatement of opposition
· serving documents on all other parties to the opposition
· requesting any necessary extensions of time to explore alternative dispute resolution and negotiate
settlement terms before and during the opposition proceeding
· filing evidence and written argument with the Registrar of Trade-marks
· appearing at the opposition hearing
· appealing a Trade-mark Opposition Board decision before the Federal Court of Canada, and when
needed and leave has been granted before the Federal Court of Appeal and the Supreme Court of
Litigation - Enforce and Defend your IP Rights
Due to the rising costs associated with intellectual property disputes, our professionals at Abaunza McLeod LLP encourage clients to choose the most economical means of resolving any dispute. Our professionals encourage avenues such as Alternative Dispute Resolution (ADR) in the form of negotiation and mediation, in order to enforce your IP rights and reach settlement without the need to resort to costly litigation inside the courtroom. This approach may resolve the dispute sooner and it will also protect your brand, commercial interests, identity and reputation in the marketplace.
Nonetheless, in some cases, litigation is required. Our team of litigators provides you with the competitive edge in order to enforce and defend your IP rights.
Our litigation services include:
· representation in Canadian common law and Québec civil law as it relates to intellectual property
· representation in both official languages; English and French
· representation in the Federal Court of Canada and the provincial courts of Ontario and Québec
· provide ADR processes, including mediation and negotiation
· documenting the terms of settlement following ADR
· advise on enforcement and infringement options
· advise on third party rights, such as validity and enforceability
· advise on any available defences to infringement
· advise on the likelihood of successfully initiating or defending litigation
· preparing and serving cease and desist letters
· issuing pre-litigation demands
· gathering evidence prior to litigation