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Preparing a Statement of Opposition

Please read the Practice in Trade-mark Opposition Proceedings prior to preparing a Statement of Opposition. You may file a Statement of Opposition on your own, but it is highly recommended that an opponent seek advice from a trade-mark agent. We maintain a list of trade-mark agents for your assistance.

An opposition can only be commenced after a trade-mark application has been advertised in the Trade-marks Journal. Once the application has been advertised, there is a two-month period within which an opponent can either file a Statement of Opposition or request an Extension of Time for the purpose of doing so.

A Statement of Opposition must contain:

  • The grounds of opposition (s. 38(2) of the Trade-marks Act) in sufficient detail to enable the applicant to reply (s. 38(3) of the Trade-marks Act).
  • The name of the opponent and the address of the opponent's principal office or place of business in Canada. If the opponent has no office or place of business in Canada, it must provide its principal office or place of business abroad and the name and address in Canada of a person or firm on who service of documents may be made (representative for service).
  • The prescribed fee of $750.00 (see Payment of prescribed fees).
  • The name and address of the opponent's trade-mark agent, if any.

It is important for the opponent to review all of the details and grounds of opposition very carefully prior to filing because no amendments to a Statement of Opposition are allowed except with leave of the Registrar of Trade-marks, and on such terms as the Registrar determines to be appropriate (s. 40 and s.44 of the Trade-marks Regulations).

Once a Statement of Opposition is filed, the Registrar will review it and, if it is deemed to be sufficient, will serve it on the applicant (s. 38(5) of the Trade-marks Act). The opponent will be notified by the Registrar if the Statement of Opposition is considered sufficient and is served upon the applicant, or if the Statement of Opposition is rejected on the basis that it does not raise a substantial issue for decision (s. 38(4) of the Trade-marks Act).

First Extension of Time to File a Statement of Opposition

The opponent may request an extension of time to file its Statement of Opposition. In compliance with Practice in Trade-mark Opposition Proceedings, an opponent may request:

  1. An extension of time up to a maximum benchmark of three months within which to file a Statement of Opposition. Reasons must be provided and the prescribed fee for an extension of time must be paid. This fee is non-refundable. Consent from the applicant is not required.
  2. One extension of time up to a maximum benchmark of nine months, on consent from the applicant, amounting to a cooling-off period to allow the parties to pursue settlement negotiations either prior to the filing of the Statement of Opposition or the opponent's evidence under s.41(1) of the Trade-marks Regulations. Sufficient reasons must be provided and the prescribed fee for an extension of time must be paid. This fee is non-refundable. Consent from the applicant is required. (See V.1.1 Extensions of Time Amounting to a Cooling-off Period of the Practice in Trade-mark Opposition Proceedings).

A First Extension of Time to File a Statement of Opposition request must contain:

  • the trade-mark, the application serial number, the date of advertisement in the Trade-marks Journal, and the name of the applicant;
  • the name of the opponent, and its Canadian address. If the opponent does not have a Canadian address, then the name and address of its Canadian trade-mark agent or representative for service.
  • the name and address of the opponent's trade-mark agent, if any.

Extensions of Time - Counter Statement

The applicant may request an extension of time to file its Counter Statement. In compliance with Practice in Trade-mark Opposition Proceedings, an applicant may request:

  1. An extension of time up to a maximum benchmark of two months. Sufficient reasons must be provided and the prescribed fee for an extension of time must be paid. This fee is non-refundable. Consent from the opponent is not required.
  2. One extension of time up to a maximum benchmark of nine months, on consent from the opponent, amounting to a cooling-off period to allow the parties to pursue settlement negotiations either prior to the filing of the counter statement or the applicant's evidence under s.42(1) of the Trade-marks Regulations. Sufficient reasons must be provided and the prescribed fee for an extension of time must be paid. This fee is non-refundable. Consent from the opponent is required. (See V.1.1 Extensions of Time amounting to a Cooling-off Period of the Practice in Trade-mark Opposition Proceedings).

Extensions of Time - Evidence (Rules 41/42)

The opponent/applicant may request an extension of time to file its evidence. In compliance with Practice in Trade-mark Opposition Proceedings, an opponent/applicant may request:

  1. In the case of an opposition relating to a trade-mark application advertised in the Trade-marks Journal on or after October 1, 2007:
    • An extension of time up to a maximum benchmark of three months. Sufficient reasons must be provided and the prescribed fee for an extension of time must be paid. This fee is non-refundable. Consent from the other party is required.
  2. In the case of an opposition relating to a trade-mark application advertised in the Trade-marks Journal before October 1, 2007:
    • An extension of time up to a maximum benchmark of six months. Sufficient reasons must be provided and the prescribed fee for an extension of time must be paid. This fee is non-refundable. Consent from the other party is required.
  3. One extension of time up to a maximum benchmark of nine months, on consent, amounting to a cooling-off period to allow the parties to pursue settlement negotiations only in cases where the opponent/applicant, as the case may be, has not already been granted an extension of time up to a maximum benchmark of nine months, amounting to a cooling-off period for filing its Statement of Opposition/Counter Statement. Sufficient reasons must be provided and the prescribed fee for an extension of time must be paid. This fee is non-refundable. Consent from the other party is required (See V.1.1 Extensions of Time amounting to a Cooling-off Period of the Practice in Trade-mark Opposition Proceedings).

Extensions of Time - Evidence (Rule 43)

The opponent may request an extension of time to file its reply evidence. In compliance with Practice in Trade-mark Opposition Proceedings, an opponent may request an extension of time up to a maximum benchmark of four months. Sufficient reasons must be provided and the prescribed fee for an extension of time must be paid. This fee is non-refundable. Consent from the applicant is required.

Extensions of Time - Written Arguments

The opponent/applicant may request an extension of time to file written arguments. In compliance with Practice in Trade-mark Opposition Proceedings, an opponent/applicant may request an extension of time up to a maximum benchmark of four months. Sufficient reasons must be provided and the prescribed fee for an extension of time must be paid. This fee is non-refundable. Consent from the other party is required.

Extensions of Time - Exceptional Circumstances

Before filing a request for an extension of time on the basis of exceptional circumstances, please read Part V.3 Extensions of Time beyond the Benchmark - Exceptional Circumstances in the Practice in Trade-mark Opposition Proceedings.

The opponent/applicant may file a request for an extension of time on the basis of exceptional circumstances. However, once such a request is filed, it will be reviewed by a Member of the Board, acting on behalf of the Registrar, to determine whether or not to grant your extension of time under s.47(1) of the Trade-marks Act. The Registrar may deny your request for this extension of time without providing you any additional time. Following the filing of your request and as soon as administratively possible, the Registrar will notify the parties in writing whether your request for this extension of time has been granted or denied.

In compliance with the Practice in Trade-mark Opposition Proceedings, an opponent/applicant will only be granted an extension of time on the basis of exceptional circumstances on a case-by-case basis, and only if the Registrar is satisfied, on the facts of the particular case, given the stage of the proceeding, that the party requesting the extension of time has demonstrated exceptional circumstances justifying the further extension of time.

In making such a request, the party must provide sufficient reasons, supported by a full and frank disclosure of all of the relevant facts. The prescribed fee for an extension of timemust be paid. This fee is non-refundable. Consent from the other party is not required, except in the case of a request for finalizing settlement (See V.3.6 - Finalizing Settlement in Practice in Trade-mark Opposition Proceedings).

Please note that if your request for an extension of time is denied, this can result in your application being deemed abandoned or your opposition being deemed withdrawn. An application is deemed abandoned under s. 38(7.2) of the Trade-marks Act if the applicant does not file and serve its counter statement or submit either evidence or a statement that the applicant does not wish to file evidence. Similarly, an opposition is deemed to be withdrawn under s. 38(7.1) of the Trade-marks Act if the opponent does not submit either evidence or a statement that the opponent does not wish to file evidence. See Service on the other Party to the Opposition in Practice in Trade-mark Opposition Proceedings.