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Opposition Proceedings

From: Canadian Intellectual Property Office

This information is to be considered solely as a guide and should not be quoted as or considered to be a legal authority. It may become obsolete in whole or in part at any time without notice. Users of this information should also consult the Trademarks Act, the Trademarks Regulations and the decisions of the courts interpreting them. In the event of any discrepancy between the legislation and the information contained herein, the legislation will apply.

An opposition is a process, or proceeding, before the Registrar of Trademarks (the Registrar) whereby somebody (the opponent) objects to the registration of a trademark in Canada.

A successful opposition prevents a trademark application from issuing to registration. It does not prevent an applicant from using its mark in Canada; only the courts can prohibit a party from using a mark.

The standard stages in an opposition proceeding are as follows:

  1. Pleadings stage:
    1. the opponent files a statement of opposition setting out the reasons why they want to oppose the registration of the trademark; these are called grounds of opposition;
    2. the Registrar reviews the statement of opposition and, if it is deemed to be sufficient, forwards it to the applicant;
    3. the applicant files and serves a counter statement; this is a document merely stating that the applicant intends to respond to the opposition. (alternatively, the applicant requests an interlocutory ruling to strike all or any portion of the opponent' statement of opposition. If a request for an interlocutory ruling is filed, the Registrar will give the opponent an opportunity to reply and/or file an amended statement of opposition).
  2. Evidence stage:
    1. the opponent files and serves evidence in the form of affidavits or statutory declarations (alternatively, it files and serves a statement that it does not wish to file evidence)
    2. the applicant files and serves evidence in the form of affidavits or statutory declarations (alternatively, it files and serves a statement that it does not wish to file evidence)
    3. the opponent may also file and serve reply evidence in the form of affidavits or statutory declarations in reply to the applicant's evidence;
    4. either party may obtain orders to cross–examine the other's deponents.
  3. Argument stage:
    1. the Registrar will give both parties notice that they may submit and serve written representations, sequentially;
    2. either party may file a hearing request to make representations to the Registrar at an oral hearing.

Once all of the stages are complete, the Registrar issues a written decision. This decision is appealable to the Federal Court.

Standing in an opposition proceeding

Any person is entitled to start an opposition, provided that such person relies on at least one of the grounds of opposition set out in section 38 of the Trademarks Act or section 104 of the Trademarks Regulations. If desired, any number of persons can be named jointly as opponents.

It is highly recommended that an opponent hire a registered trademark agent to represent it. Opposition proceedings typically are complex and cost much time and money, so you should choose your trademark agent carefully. Choose someone with proven expertise in this field.

Starting an opposition proceeding and filing a statement of opposition

An opposition proceeding is started by the filing of a statement of opposition, with the prescribed fee.

An opposition proceeding cannot be started until after the trademark application has been advertised in the Trademarks Journal on the Canadian Intellectual Property Office (CIPO)'s website. Once the application has been advertised, there is a two-month period within which a would-be opponent can either:

  1. start the opposition procedure by filing a statement of opposition, with the prescribed fee; or
  2. request an extension of time to file a statement of opposition.
  1. To start the opposition proceeding, a would-be opponent (or their trademark agent) must:
    1. Prepare a statement of opposition. In doing so, the would-be opponent must consult the following:
      1. s.38(2) of the Trademarks Act, which lists the seven grounds on which an application may be opposed;
      2. Section 104 of the Trademarks Regulations, which lists the ground of opposition on which a trademark that is the subject of a Protocol application may be opposed, if applicable;
      3. s.38(3) of the Trademarks Act, which requires a statement of opposition to be set out in sufficient detail to enable the applicant to reply; a proper pleading alleges the material facts but not the evidence, which the party intends to adduce to establish those facts;
      4. s.38(4) of the Trademarks Act, which authorizes the Registrar to not permit the opposition to proceed if the statement of opposition fails to raise a substantial issue for decision; and
      5. If the trademark application being opposed was advertised in the Trademarks Journal before , Form 8: Statement of Opposition to an Application for Registration of a Trademark; and
    2. File the statement of opposition, with the prescribed fee, with the Trademarks Opposition Board (TMOB) in one of the following ways:
      1. using the TMOB's e-Services; or,
      2. by sending it by regular mail to CIPO or by dropping it directly at CIPO in person or by courier. In such a case, the would-be opponent (or their trademark agent) must prepare a covering letter setting out the details below and specifying the method by which the prescribed fee is being paid (see How to Make a Payment). This letter must be clearly marked "Attention Trademarks Opposition Board" and include:
        • the name of the opponent;
        • the name of the applicant;
        • the application number; and
        • the trademark;
        • in the case that the statement of opposition is submitted by a trademark agent, the name of that trademark agent; and,
        • if all the trademark agents at the same firm are appointed in respect of the business to which the statement of opposition relates, the name of that firm.

    Important: Please note that the TMOB's e-Services should only be used to file a statement of opposition if the trademark application being opposed was advertised after .

  2. To request an extension of the two-month period allowed to file a statement of opposition, and pay the prescribed fee, a would-be opponent (or their trademark agent) must:
    1. Request the extension of time and pay the prescribed fee using the TMOB's e-Services.

    or

    1. Send the request for the extension of time to CIPO, with the prescribed fee, by regular mail or by dropping it directly at CIPO in person or by courier. In such a case, the would-be opponent (or their trademark agent) must prepare a letter setting out the information below. This letter must be clearly marked "Attention Trademarks Opposition Board" and include:
      1. the trademark being opposed, the application number, the date of advertisement of the trademark application in the Trademarks Journal, and the name of the applicant;
      2. the name of the opponent, the address of the opponent's principal office or place of business in Canada, if any (if the opponent does not have an office or place of business in Canada, the address of his principal office or place of business abroad and the name and address in Canada of a person or firm on whom service of any document in respect of the opposition may be made with the same effect as if it had been served on the opponent himself. This person can be the opponent's trademark agent)
      3. the name and address of the opponent's trademark agent, if any;
      4. sufficient reasons to explain why the extension of time is required;
      5. the method by which the prescribed fee is being paid (see How to Make a Payment);
      6. In the case that the request for the extension of time is submitted by a trademark agent, the name of that trademark agent; and,
      7. if all the trademark agents at the same firm are appointed in respect of the business to which the request for the extension of time relates, the name of that firm.

Once the two-month period of time has elapsed, it may still be possible for a would-be opponent to start an opposition proceeding if they can obtain a retroactive extension of time for so doing. In such cases, in addition to being accompanied by the prescribed fee, the request for the extension of time must set out sufficient reasons explaining why the failure of the would-be opponent to file a statement of opposition or request an extension of time to file a statement of opposition within the two-month period was not reasonably avoidable.

Cost of an opposition proceeding

In order to start an opposition, a prescribed fee must be paid. Fees are also payable to obtain extensions of time (fees). Those are the only amounts payable to the Registrar but parties to an opposition will also spend time and money preparing evidence in the form of affidavits or statutory declarations, conducting cross-examinations, preparing written representations, etc. Overall, opposition proceedings are lengthy and not inexpensive. Moreover, there is no ability for the winning party to have any of its costs paid by the other side.

Payment of prescribed fees

Fees to start an opposition or to obtain extensions of time can be paid using the TMOB e-Services. Please contact the Client Service Centre to enquire about the other acceptable means of payment.

Please also see fees and the Practice Notices concerning payment of fees: Fee Payment Practice of the Canadian Intellectual Property Office, and Fee Payment: General Authorization to Charge a Deficiency.

Amending grounds of opposition

In some situations, it is possible to obtain leave to amend a statement of opposition (see Leave to amend pleadings or submit evidence in Practice in trademark opposition proceedings). However, as this cannot always be done, care should be taken in drafting the original statement of opposition (a registered trademark agent can assist you in this regard).

Settling an opposition

Given the expense and length of time required to complete an opposition proceeding, it is always advisable for both the opponent and the applicant to consider if there are any terms on which they could settle the opposition without the need to conclude opposition proceedings.

Alternative dispute resolution resources

Defending an opposition and filing a counter statement

The owner of a trademark application (or its trademark agent) will receive a copy of an opponent's statement of opposition directly from the Registrar, together with a letter informing the applicant of its deadline to file and serve a counter statement.

If an applicant does not already have a trademark agent, it is strongly recommended to hire one at this point. Opposition proceedings typically are complex and cost much time and money and a trademark agent should be chosen carefully. Choose someone with proven expertise in this field.

An applicant (or its trademark agent) must complete one of the following three actions prior to the expiration of its deadline, failing which its application may be deemed to have been abandoned (if the deadline has already expired, see What do I do if I missed the deadline… below):

  1. File a counter statement and serve it on the opponent (or on their trademark agent);
  2. Request an extension of time to file the counter statement; or,
  3. Request an interlocutory ruling to strike all or part of the statement of opposition.
  1. The filing and serving of the counter statement on the opponent (or on their trademark agent) can be done in one of the following ways:
    1. By filing the counter statement and serving it on the opponent using the TMOB's e-Services; or,
    2. By sending it by regular mail to CIPO or by dropping it directly at CIPO in person or by courier. In such a case, the applicant must also serve a copy of the counter statement on the opponent. In doing so, the applicant should have regard to the following:
      1. service on the other side must be accomplished by the deadline and in accordance with the requirements set out in r. 46 of the Trademarks Regulations – the correspondence filed with the CIPO must clearly indicate when and how the counter statement was served on the other side;
      2. Form 9: Counter Statement to Opposition sets out one style of counter statement, but a counter statement may also merely consist of a statement that the applicant denies each and every allegation in the statement of opposition;
      3. Correspondence Procedures and section I of Practice in trademark opposition proceedings;
      4. s. 38(7) of the Trademarks Act.
  2. To request an extension of time to file the counter statement and pay the prescribed fee the applicant must:
    1. Request the extension of time et pay the prescribed fee using the TMOB's e-Services.

    or

    1. Send the request for the extension of time to CIPO, with the prescribed fee, by regular mail or by dropping it directly at CIPO in person or by courier. In such a case, the applicant (or their trademark agent) must prepare a letter setting out the information below. This letter must be clearly marked "Attention Trademarks Opposition Board" and include:
      1. the trademark being opposed, along with its application number;
      2. reasons to explain why the extension of time is required;
      3. the method by which the prescribed fee is being paid (see How to Make a Payment);
      4. cc. the opponent's agent (or the opponent if they do not have an agent);
      5. In the case that the request for the extension of time is submitted by a trademark agent, the name of that trademark agent; and,
      6. if all the trademark agents at the same firm are appointed in respect of the business to which the request for the extension of time relates, the name of that firm.
  3. The applicant can also request an interlocutory ruling to strike all or any portion of the statement of opposition (e.g. on the basis that it alleges grounds other than those set out in s.38 of the Trademarks Act or does not set out sufficient details to enable the applicant to reply as required by s. 38(3) of the Act) and request an extension of time for filing their counter statement in view of the pending request for an interlocutory ruling (See sections II.2 on Interlocutory rulings in Practice in Trademark Opposition Proceedings). This can be done in one of the following ways:
    1. using the TMON e-Services; or,
    2. By regular mail to CIPO or by dropping the request directly at CIPO in person or by courier. In such a case, the applicant must also serve a copy of the request on the opponent (or on their trademark agent).

What do I do if I missed the deadline or if I did not properly complete one of the above three actions prior to the expiration of the deadline? It may be possible to obtain a retroactive extension of time pursuant to s. 47(2) of the Trademarks Act in order to prevent the application from being deemed abandoned. Any such request must be accompanied by the prescribed fee (see prescribed fee and Payment of prescribed fees) and set out sufficient facts for the Registrar to be satisfied that the failure to take the necessary action within the deadline was not reasonably avoidable. The fee must accompany the request and the other side must be copied.

In general, please see Practice in trademark opposition proceedings for further details.

Form of evidence to file

The opponent needs to file evidence that supports the allegations raised in their statement of opposition.

The applicant needs to file evidence that rebuts the opponent's allegations and evidence.

Both the opponent and the applicant should note the following:

  • Evidence must be submitted to the Registrar and served on the other party in the form of affidavits or statutory declarations. See section IV on evidence in Practice in trademark opposition proceedings;
  • Evidence should not be filed by facsimile; the use of facsimile as a mean of transmission for evidence presents issues such as the often-poor quality of transmission, the risk of incomplete transmission, the voluminous nature of the documents, etc., resulting in delays. Therefore, evidence submitted by facsimile in respect of an opposition will not be accepted;
  • Evidence may be filed and served using the TMOB's e-Services;
  • The other side may obtain an order to cross–examine your deponent (see section VII on Cross–examination in Practice in trademark opposition proceedings).

The exact nature of the evidence to be filed depends on the individual case. A registered trademark agent can assist you in determining what evidence is needed in order to put your best case forward.

The evidence must be filed with the TMOB and served on the other side within the set deadline.

Serving the other party

See section III on Service in opposition proceedings in Practice in trademark opposition proceedings.

Obtaining an extension of time

See section X on Extensions of Time in Practice in trademark opposition proceedings.

Overall timeline for an opposition proceeding

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

Appealing a TMOB decision

An appeal from the final decision of the Registrar in an opposition proceeding may be made to the Federal Court (see s. 56 of the Trademarks Act).

Obtaining copies of TMOB decisions

To order a copy of any decision of the TMOB:

  1. Go to the Photocopies and Certified Copies of Decisions page or
  2. Call 1–866–997–1936 and ask for Data and Document Dissemination (in order to obtain a specific decision, you will need to provide the corresponding application number).

Status of active trademarks opposition files

Information on trademarks opposition cases is accessible on the Canadian Trademarks Database.

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