Overview of the Trademark Opposition Process in Canada

You have filed your trademark application, gone through the review by the examiner and have had your trademark approved for publication. Now you have received a Statement of Opposition from the Canadian Intellectual Property Office which indicates that a third party is opposing your trademark. What does this mean?

When your trademark is published in the Trademarks Journal, the “public” has a period of two months to oppose the registration of your trademark. The Statement of Opposition will set out the arguments for the third party opposition, which will be one or more of the following four reasons:

1. non-conformity with the prescribed requirements of the Trademarks Act for filing a trademark application;
2. non-registrability of the trademark;
3. non-entitlement to the registration of the trademark; and/or
4. non-distinctiveness.

You will be required to address the Statement of Opposition within a strict timeline unless an extension is requested.

The opposition process consists of an exchange of specific documents and evidence by each party. When a Statement of Opposition is filed it must be responded to with a Counter-Statement. The Counter-Statement is responded to by the opposing party with evidence supporting their arguments. You will then be required to submit evidence to support your arguments as to why your trademark should proceed to registration. Subject to any additional proceedings such as cross-examinations, written arguments and/or oral hearings, the Trademarks Opposition Board will review the documentation and evidence provided and render their decision.

Our Intellectual Property Team can assist you with preparing your documents and compiling relevant evidence to ensure that your trademark has the best chance possible to succeed against an opposition claim.