Alternative Dispute Resolution

Alternative dispute resolution, or “ADR” is a form of dispute resolution, without resorting to the Courts. This can include negotiation, mediation and arbitration. Often, ADR is more cost-effective than litigation, with the parties themselves being more engaged in the final resolution, rather than a decision rendered by a judge. Likewise, early settlement can facilitate a solution prior to proceeding to more expensive steps in litigation (e.g. discovery).

As problem-solvers, we work to find a solution which keeps our clients’ business interests at the core of the services we offer. We can assist with ADR and settlement if you are in the midst of:

  • Disputes in relation to software & licensing agreements, service level & maintenance agreements, and data hosting agreements;
  • Joint venture partnership or shareholder disputes;
  • Expungement / Trademark Opposition proceedings; and
  • Proceedings before the Ontario or Federal courts.

Trademark Expungement & Opposition Proceedings

Trademarks serve to protect the distinguishing marks of products and companies. A trademark can be a symbol, logo, word, sound, color, or name that identifies the sources of a product and distinguishes it from other competitors. Trademarks grant holders exclusive rights to the use of their work/s.

A trademark expungement proceeding (also called a “section 45” proceeding) can occur when a party believes your mark is no longer being used. Likewise, you can commence an expungement proceeding if you also believe a mark is no longer being used, and you would like to use it (or a similar mark). An expungement proceeding has the effect of removing marks which have fallen into disuse from the Trademark Register, so that other businesses can use the marks, or similar ones, without fear of infringement.

A trademark opposition proceeding often occurs a) in the midst of the trademark registration process, or b) when you are a trademark owner, and a party seeks to register a trademark similar to yours. It takes place before the Trademarks Opposition Board – not a court, but a specialized tribunal. However, the opposition process can still be an adversarial one, where legal counsel is required to defend your brands.

Opposition proceedings prevent competitors from registering marks similar to yours, thus diluting the “good will”, “value” or “reputation” attached to your brand, thus protecting your “bottom line”. They also prevent confusion between your products and services, and those of a competitor, ensuring you enjoy the profits attached to your brands.

Contact us to find out how to protect your brands and / or expunge or oppose a mark, or require brand protection in the face of a pending expungement/opposition proceeding.

Application for Judicial Review

In the trademark context, an application for judicial review, also called a section 56 appeal pursuant to the Trademarks Act, is a review of the decision of the Registrar of Trademarks, usually in a section 45 (expungement) or opposition proceeding.

Sometimes, after opposing the mark of a competitor, or seeking to have a mark expunged (“removed”) from the Trademark Register, the Registrar of Trademarks (or the “judge” of the Trademarks Opposition Board, a specialized tribunal) will rule against you. That is, the Registrar of Trademarks may:

  • Maintain the registration of a mark on the Register, that you believe is not being used;
  • Remove your mark from the register;
  • Allow a mark (in your same channel of trade) to be registered in an opposition proceeding; and / or
  • Rule against you in an opposition, preventing your mark (and therefore, business brand) from being registered.

If you find yourself in one of these situations, the decision can be appealed to the Federal Court by way of section 56 appeal, or judicial review. That is, a judge of the Federal Court will review (“check”) the decision of the Registrar of Trademarks. If the Registrar was wrong, the decision of the Trademarks Opposition Board will be overturned. In other words, you need not take “no” for an answer.

Contact us to find out how to protect your brands and / or enforce your IP rights if you are in receipt of a decision you would like appealed.