FAQ on opposition proceedings – The opponent

An opposition is a process, or proceeding, that is started by a third party (the opponent) to prevent an applicant from registering a trademark in Canada. Opposition proceedings are managed by the Trademarks Opposition Board (the Board) on behalf of the Registrar of Trademarks.

There are seven specific reasons for opposing the registration of a trademark under the Trademarks Act and the Trademarks Regulations. These are called grounds of opposition. Reasons that do not fall under at least one of these seven grounds of opposition cannot be used to support an opposition against a trademark application (see section 38(2) of the Trademarks Act and section 104 of the Trademarks Regulations).

An opposition proceeding before the Registrar can take as long as two to four years or even longer.

1. Statement of opposition
2. Counter statement
3. Evidence
4. Written representations (optional)
5. Hearing (optional)
6. Decision
7. Appeal

If a person objects to the registration of a trademark that has been applied for, they can start an opposition as long as it properly raises at least one ground of opposition set out in sufficient detail to enable the other party (the applicant) to reply to it. An opponent can be one or more individuals or entities.

No. You can only oppose a trademark that has been applied for registration in Canada, but that has not yet been registered. An opposition can take place only once an application has been advertised in the Trademarks Journal on the Canadian Intellectual Property Office's (CIPO) website. You will have two months from that date to start an opposition.

The deadline to oppose can be extended under certain circumstances. For more information please consult the practice notice "Practice in trademarks opposition proceedings".

You can search the Canadian Trademarks Database, which contains all the trademarks that have been applied for in Canada.

It is your responsibility to monitor the progress of a trademark application that you would like to oppose. You can check the status of a trademark application in the Canadian Trademarks Database.

Once an application has been reviewed and approved by the Registrar, the date when the application is published in the Trademarks Journal on CIPO's website appears in the "Advertised" field. You can oppose an advertised application in the two months from the date of the publication.

All opposition correspondence with the Registrar must be clearly marked "Attention Opposition Board" and must identify:

• the name of the opponent
• the name of the applicant
• the application number of the trademark
• the trademark

We advise that you send your documents ahead of the deadline. You can send documents to the Registrar electronically or by regular or registered mail, courier, or fax. You can also submit them in person or by courier at CIPO.

It is recommended to plan ahead and keep filing deadlines in mind, as delays in the delivery of mail and unexpected technological problems can occur. Do not wait until the last day to submit your documents, since they might not arrive or be received on time.

For the purposes of trademark opposition proceedings, you can use the Board's e‑services system. For details on what can be sent and size limits of documents, please consult the practice notice, "Electronic evidence in opposition and section 45 proceedings". For help with using the Board's e-services, please consult Online Help — Trademarks Opposition e-Services.

This deadline can be extended under certain circumstances. For more information please consult Practice in trademarks opposition proceedings.

The Board cannot provide legal or substantive advice with respect to your case, nor can the Board comment on the merits of your case. The Board however, can provide general information with respect to opposition procedure.

To start an opposition, you have to file your statement of opposition with the prescribed fee in the two months from the date that an application is published in the Trademarks Journal on CIPO's website. The fee for filing a statement of opposition is set out in the Fees for trademarks webpage.

Before embarking on an opposition process that can be lengthy and costly, both parties should consider alternative options, such as dispute resolution. You can find more information from the Intellectual Property Institute of Canada (IPIC) or IP Neutrals of Canada.

The appropriate fees are listed in the Fees for trademarks webpage. Please contact the Client Service Centre for currently acceptable means of payment or consult our website on How to Make a Payment.

Please also see the practice notice: Fee Payment Practice of the Canadian Intellectual Property Office.

No, a trademark agent is not required, but if you do not already have a registered trademark agent, we urge you to hire one at this point. Opposition is a complex and often long process. You should choose a trademark agent with expertise in this field.

Yes, you or your newly appointed agent can make a request to change your agent. The request must be made in writing and sent to the Registrar.

A statement of opposition includes information about you (full name and address) and sets out the reasons why you object to the registration of the trademark. There are seven specific reasons for opposing the registration of a trademark under the Trademarks Act and the Trademarks Regulations. These are called "grounds of opposition." Reasons that do not fall under these seven grounds of opposition cannot be used to support an opposition against a trademark application (see section 38(2) of the Trademarks Act and section 104 of the Trademarks Regulations).

You do not need to provide evidence to support your grounds of opposition at this point, but you have to provide enough details about each of them in your statement of opposition to allow the applicant to understand and to respond properly to your objections.

You must send a signed copy of your statement of opposition to the Registrar along with a covering letter clearly stating the application number and the trademark that you are opposing within two months from the date that the application was published in the Trademarks Journal on CIPO's website. The covering letter should also include information about how you will pay the prescribed fee. The Registrar must receive your covering letter, a copy of your statement of opposition, and the prescribed fee before your statement of opposition is reviewed.

Alternatively, you can submit your statement of opposition, cover letter, and pay your fee online via the Board's e-services once you have created an account.

Please note that the Registrar does not generally accept email communications.

It is recommended to plan ahead and keep filing deadlines in mind, as delays in the delivery of mail and unexpected technological problems can occur. Do not wait until the last day to submit your documents, since they might not arrive or be received on time.

The Registrar will determine if your statement of opposition meets the minimum requirements. If it does, the Registrar will forward a copy of your statement of opposition to the applicant, with an official notice of opposition. You will also receive a copy of the official notice by mail.

If you did not include the filing fee, or if the statement of opposition does not meet the minimum requirements, the Registrar will inform you in writing.

In order to defend the application, the applicant has to respond in writing to your statement of opposition. This response is called a "counter statement". The applicant must send the counter statement to the Registrar, and send and serve a copy on you, within two months from the date of the official notice of opposition sent by the Registrar.

You can check the status of the opposition proceeding in the Canadian Trademarks Database:

• Under "Search field", select "Application Number"
• Beside "Enter search criteria", type the number of the application
• Press the "Search" button

If it has been more than two months since the date of the official notice of opposition, unless the applicant is able to obtain an extension of time from the Registrar, the opposition process will come to an end. The application will be deemed to have been abandoned and the trademark will not be registered.

No, the Registrar does not provide translation services. It is recommended that you contact a translator.

Look at the applicant's counter statement carefully together with your statement of opposition. Then put together evidence to support your opposition.

Evidence is any testimony, document or object that a party relies on to prove its case. In an opposition proceeding, the Registrar accepts two types of evidence; 1) witness' testimony presented in the form of an affidavit or a statutory declaration, or 2) certified copies of trademark applications or registrations. Any documents or objects (or photos of objects) that support the witness' testimony will have to be identified in the affidavit or the statutory declaration and attached as exhibits.

If you are providing a certified copy of a trademark registration or application issued by the Registrar as evidence, it does not need to be attached to an affidavit or a statutory declaration. It can be submitted as stand-alone evidence.

An affidavit or statutory declaration is a written declaration or statement of facts that is confirmed by an oath or affirmation in the presence of a commissioner of oaths or a notary public. If the written declaration or statement of facts refers to documents or objects (or photos of objects), they must be attached to the document as exhibits and signed by the commissioner of oaths or notary public.

The commissioner of oaths or notary public will confirm that the person who signed the written declaration or statement of facts did so after having attested to the truth of the information contained in the affidavit or the statutory declaration.

You must submit your evidence to the Registrar and serve a copy of your evidence on the applicant within four months from the time the applicant sent its counter statement to you or within the extended deadline given to you by the Registrar.

You also need two copies of a letter informing the Registrar of the effective date and method of service you chose to serve your evidence on the applicant: the original for the Registrar and a copy for the applicant. We recommend making a copy of your evidence for yourself as well.

You can now submit your evidence to the Registrar electronically using the Board's e‑services system. For details on what can be sent and size limits of documents, please consult the practice notice, "Electronic evidence in opposition and section 45 proceedings". For help with using the Board's e-services, please consult Online Help — Trademarks Opposition e-Services.

It is recommended to plan ahead and keep filing deadlines in mind, as delays in the delivery of mail and unexpected technological problems can occur. Do not wait until the last day to submit your documents, since they might not arrive or be received on time.

In terms of an opposition proceeding, documents are "sent" to the Registrar, but are "served" on the other party. Service, in a legal, sense, provides the Board with assurances that the other party has, in fact, received the documents sent by the applicant. For a document to be properly "served", it must be in the manner prescribed in the Trademarks Regulations.

There are four manners of service to the opponent that will always be acceptable:

• in person
• by registered mail
• by courier, or
• by notice (if you do not have the information necessary to serve the opponent by the other three manners of service, you may send a notice to the opponent advising them that the document to be served has been filed with the Register).

Service by any other method, including electronically, is also acceptable, but only with the consent of the opponent. For example, if you want to send a copy of your counter statement or of your evidence to the opponent by regular mail service or by email, you need to obtain the opponent's consent in writing before doing so. If the opponent refuses delivery by regular mail or email, you will have to use one of the other three acceptable methods of delivery.

You can look up the applicant's correspondence address in the Canadian Trademarks Database:

• Under "Search field", select "Application Number"
• Beside "Enter search criteria", type the number of the application
• Press the "Search" button

Documents should be sent to the address identified in the applicant field "Agent". If there is no information for the applicant's agent, then use the address identified under the "applicant" field.

The effective date of service of a document depends upon the manner of service. The following chart provides information.

Yes, you can choose not to file evidence. However, you must inform the applicant and the Registrar that you will not be filing any evidence in a letter, within four months from the time the applicant sent you its counter statement or within the extended deadline given to you by the Registrar.

Original to the Registrar:

You must send the original letter to the Registrar confirming your intention not to file evidence and include a statement informing the Registrar of the effective date and method of service you used to send a copy of the letter to the applicant.

Copy to the applicant:

You must serve a copy of your letter to the applicant using one of the acceptable manners of service.

Unless you are able to obtain an extension of time from the Registrar, the opposition process will come to an end. The opposition will be deemed to have been withdrawn and the application will continue through the process towards registration.

The applicant will have the opportunity to send and serve evidence to defend the application. The applicant must serve on you a copy of the documents using one of the acceptable manners of service. The applicant has four months to do this, unless the applicant is able to obtain an extension of time from the Registrar.

Look at the applicant's evidence carefully and decide if you want to present evidence in response. This is called "reply evidence". If you do, you have one month from the date that the applicant served on you their evidence to file and serve your reply evidence.

In paragraph 15 of the decision Halford v Seed Hawk Inc., 2003 FCT 141, the Federal Court provides guidelines regarding what constitutes proper reply evidence. The admissibility of reply evidence will be determined at the decision stage of the proceeding.

If you are uncertain as to whether the evidence you propose to file is reply evidence, you can request leave to submit "additional evidence", which is different from reply evidence. In which case, the Registrar will make a determination as to whether it will form part of the evidence in advance of the decision stage.

Sending and serving reply evidence or additional evidence is done in the same manner as the original evidence you sent.

Yes, you can question the author of the affidavit or the statutory declaration (the deponent) on the evidence provided. This is called a "cross-examination". To do so, you need to ask the Registrar in writing to issue a cross-examination order. You must identify the affidavit or the statutory declaration in your request.

You must also serve a copy of your request on the applicant.

Once a cross-examination order has been issued, the applicant has to make the deponent available to you for questioning. You should read the cross-examination order carefully. Make sure you understand your obligations and the applicant's obligations, and take note of the deadlines to complete the cross-examination.

A cross-examination order does not give you more time to file and serve your reply evidence. The deadline for your reply evidence does not change (one month from the date you receive the applicant's evidence) unless you request and obtain an extension of time from the Registrar.

You can request a cross-examination order as soon as you receive the applicant's evidence.

You will have four months from the date of the order to both conduct the cross‑examination, and file and serve the cross‑examination transcript. You should read the cross-examination order carefully. Make sure you understand your obligations and the applicant's obligations, and take note of the deadlines to complete the cross‑examination.

You and the applicant have to agree on the date, place and time, within that four-month period, to do the cross-examination. While personal attendance is the preferred method of cross-examination, the parties may agree to conduct cross-examination by video conference or other electronic means.

You can ask the Registrar, in writing, to set a date, place and time, for the cross‑examination. You should also explain what steps you have taken to schedule the cross‑examination. The Registrar will then ask the applicant for comments before making a decision.

You must also serve a copy of your request on the applicant.

If it is a scheduling issue, you can ask the Registrar, in writing, to set a date, place and time, for the cross-examination.

If the author of the affidavit or the statutory declaration is not available for cross‑examination at all, you can ask the Registrar, in writing, to remove the affidavit or the statutory declaration from the record and to return it to the applicant.

You must also serve a copy of your request to the applicant.

You will receive a notice from the Registrar asking you and the applicant to file and serve written representations, if you wish to do so.

Read the notice carefully. It should state that you will have two months from the date of the notice to submit and serve your written representations.

Written representations are your presentations in writing of the reasons why your opposition should be maintained and the application should be refused. No supplemental evidence can be attached to your written representations.

You have to send your written representations to the Registrar, and serve a copy on the applicant.

If you include a separate cover letter with your written representations, a copy of the cover letter without the written representations must be sent to the applicant.

No, written representations are optional.

If the applicant chooses to file written representations, they will serve a copy of them on you.

Within two months after you have filed written representations (or a statement that you do not intend to file written representation), the opponent will serve on you either a copy of their written representations or a statement that they do not intend to file written representations.

Upon request, the parties will have an opportunity to orally present their representations before the Registrar. This is called a "hearing".

Hearings are optional. You can request a hearing even if you did not file written representations. However, you can make representations at a hearing only if you file a request to do so.

Your hearing request may be conditional on the applicant also requesting to be heard, but if both parties file conditional requests, a hearing will not be scheduled.

You must also send a copy of your request to the applicant (in this case, service is not necessary).

A hearing will be scheduled as expeditiously as possible and the Registrar will send the parties a notice with the date, place and time at least 90 days in advance of the scheduled hearing.

If you do not send a request for a hearing to the Registrar, the Registrar will presume that you do not intend on attending the hearing.

A hearing will be scheduled, but only the applicant will be allowed to make representations.

Yes, the Registrar will permit a hearing to be rescheduled once, upon request, if a party that requested the hearing is not available on the scheduled date.

If a party who has filed a request for hearing no longer wishes to attend a hearing, the party should, as soon as possible, communicate this to the Registrar. If both parties requested a hearing, it will be cancelled only if both parties consent to the cancellation. A hearing will not be cancelled until such time as the party or parties' request for cancellation is received in writing.

If a hearing is cancelled, the Registrar will proceed to issue a decision in due course, except in cases where the application has been abandoned or the opposition has been withdrawn. The Registrar will not agree to not issue a decision based on consent of the parties and/or pending settlement negotiations.

No, you may also participate through teleconference or videoconference. When you request a hearing or to participate in a hearing, you must inform the Board that you wish to participate through teleconference or videoconference. You must provide the Registrar with the telephone number that you will be utilizing for the hearing, so that teleconferencing or videoconferencing arrangements can be made in advance.

At the beginning of the hearing the Board member may provide a brief overview of the particulars of the case to be heard and the procedure to follow for the hearing. The member will then deal with any preliminary matters. The opponent is then given the first opportunity to make representations, followed by the applicant. After the applicant has made its representations, the opponent is entitled to make a short rebuttal. The member may ask questions at any point during the hearing.

Yes, oral hearings are open to the public. A list of upcoming hearings is available online. Should you wish to attend an oral hearing, please contact the Trademarks Opposition Board in advance at 819-997-7300.

The member of the Trademarks Opposition Board who presided over the hearing will render a decision in writing on behalf of the Registrar. The decision is based on the record, including the evidence filed by you and the applicant, the written representations submitted by either or both parties as well as the representations made at the hearing. The Registrar will send a copy of the decision to both parties once it has been issued.

The file will be assigned to a member of the Trademarks Opposition Board who will render a decision in writing on behalf of the Registrar. The decision will be based on the record, including the evidence filed by each party and any written representations submitted.

The Registrar will send a copy of the decision to both parties once it has been issued.

The Trademarks Opposition Board decisions are published by Decisia. You can also obtain photocopies and certified copies of Trademarks Opposition Board decisions that pre-date those published by Decisia:

• Go to Trademark Document Order Form; or
• Call 1-866-997-1936 and select 1 to reach the Data and Document Dissemination Unit (in order to obtain a specific decision, you will need to provide the corresponding application number).

No, the Registrar does not have the authority to award costs to a party. Neither the Trademarks Act nor the Trademarks Regulations permit the Registrar to award such costs.

Pursuant to section 56 of the Trademarks Act, an appeal of the Registrar's decision may be made to the Federal Court of Canada, within two months from the date on which notice of the decision was dispatched by the Registrar to you or within such extended time as the Court may allow.