OPTIVA - 262213

• Administrative Decision Number: 262213
• Date: 16 September 2022
• opponent: Consultora De Telecomunicaciones Optiva Media, S.L.
• Section: Trade Marks Act, 1996 - 2018 - Current

1

DECISION OF THE CONTROLLER of INTELLECTUAL PROPERTY IN

PROCEEDINGS UNDER THE TRADE MARKS ACT, 1996

In the matter of an application for registration of Trade Mark No. 262213 and in the matter of an

Opposition thereto.

Optiva Canada Inc Applicant

Consultora de Telecomunicaciones Optiva Media Opponent

The Application

1. On 21 June 2018 Optiva Canada Inc. of 302-2233 Argentina Road, Mississauga, Ontario,

L5N2X7, Canada (hereinafter “the Applicant”) made application (No. 2018/01390) under

Section 37 of the Trade Marks Act, 1996 (“the Act”) to register the word “OPTIVA” as a

Trade Mark in respect of various goods and services in Classes 9,35, 38 and 42.

2. The application was accepted for registration and advertised accordingly under No. 262213

in Journal No. 2404 dated 5 February, 2020

3. Notice of Opposition to the registration of the mark pursuant to Section 43 of the Act was

filed on 5 May 2020 by Mr Carlos Rivadulla, IP Attorney, on behalf of Consultora de

Telecomunicaciones Optiva Media, S.L. of Calle Musgo 2, 1ºG EDIFICIO EUROPA II, E-

28023 MADRID, Spain (hereinafter “the Opponent”). The Applicant, represented by

FRKelly, IP Attorneys, filed a counter-statement on 18 August 2020. The counter-statement

put the Opponent on notice of proof of use pursuant to Section 43A(1) of the Trade Marks

Act 1996.

4. The Opponent, on 11 December 2020, filed by means of a Statutory Declaration under Rule

20(1), a response to the Applicant’s request for proof of use of their trademark, EUTM

10939767, on which their Opposition case was based. The Applicant elected not to file

evidence under Rule 21.

5. The parties were asked by Official letter on 26 October 2021 to advise whether they wished

to attend at hearing or file written submissions in lieu of such attendance pursuant to Rule

25(1) & (2). The Applicant elected to file written submissions and did so on 25 February