Trademark oppositions are important in Canada. Indeed, the issuance of a registration provides a right to use the mark in Canada and, in most cases, acts as a shield against claims for monetary remedies until the registration is cancelled. Both applicants and opponents have an interest in gaining a good understanding of the process in order to maximize their chances of success. We have compiled a number of questions that are frequently asked about trademark oppositions in Canada and provide succinct answers.

Learn more information about our trademark team.

Q&As by Theme - Click on the Theme to access the Q&As

Frequently Asked Questions (FAQ)

Q. Is it possible to strike certain grounds of opposition at a preliminary stage?

A. Yes. If an applicant believes that certain grounds of opposition are improper or improperly pleaded it can file a request to strike these grounds of opposition. This request must be filed at the latest before the applicant files its Counter Statement of Opposition. An extension of time to file the Counter Statement must be requested at the same time. The opponent will have an opportunity to amend its Statement of Opposition in the context of this contestation, if it deems it appropriate. If all grounds of opposition are struck, the opposition proceeding will end.

Q. Can the Registrar summarily reject an opposition?

A. Yes. The Registrar will examine the Statement of Opposition, and if it raises no substantial issue for decision, it may reject the Statement of Opposition without even communicating it to the applicant. To the extent there is at least one ground of opposition raising a substantial issue for decision, the Statement of Opposition as a whole will be accepted and communicated to the applicant.

Q. Is it necessary to file evidence along with a Statement of Opposition?

A. No. The opponent’s deadline to submit and serve its evidence is four months from the date of service of the applicant’s Counter Statement of Opposition. If the opponent does not wish to file evidence, a statement to this effect must be filed with the Registrar within the same deadline.

Q. Is a power of attorney necessary to file a Statement of Opposition?

A. No, a power of attorney is not required. The Registrar will send all further correspondence to the trademark agent signing the Statement of Opposition.

Q. If I receive a Statement of Opposition, how much time do I have to contest an opposition?

A. A Counter Statement of Opposition must be filed two months from the date on which the Registrar forwards the Statement of Opposition to the applicant; a one month extension of time may be requested. Consent from the opponent is not required. It is very important to file a Counter Statement of Opposition because failure to do so within the prescribed deadline will result in the application being deemed abandoned.

Q. Is a cooling off period available to negotiate settlements?

A. Yes. A cooling-off period is available to negotiate settlements. Each party may ask for one cooling-off extension of up to seven months. The Registrar will require the consent of the other party to grant the extension of time. This cooling off period can be ended early in the event settlement negotiations cease.

Q. Is it possible to contest the rights of the opponent if its mark is not in use?

A. It is not possible to do so within the opposition proceeding. A trademark registered for at least three years may nonetheless be expunged for non-use pursuant to separate summary cancellation proceedings filed under section 45 of the Trademarks Act. Within three months of the date of notice of the proceedings being sent to the registered owner, affidavit evidence showing that the mark was used in Canada in association with all the goods and services listed in the registration during the three-year period preceding the date of the notice must be provided. Failure to file evidence or failure to file satisfactory evidence may lead to expungement of the registration in whole or in part. It is also possible to contest a registration for non-use before a Court of law, in which case abandonment of the trademark must be shown.

Q. Who has the burden of proof in an opposition?

A. There is an initial evidentiary burden on the opponent to adduce sufficient admissible evidence to support each ground of opposition set out in the Statement of Opposition. If the opponent meets the initial evidentiary burden, the onus then shifts to the applicant to prove that the various grounds of opposition should not prevent registration of its trademark. The opponent’s initial burden is generally light.

Q. How much time does each party have to prepare and file its evidence?

A. The opponent has a four month deadline to submit and serve its evidence or a statement to the effect that it will not be filing evidence. This deadline is calculated from the effective date of service of the applicant’s Counter Statement of Opposition. The applicant then has a four month deadline to submit and serve its evidence. This deadline is calculated from the effective date of service of the opponent’s evidence, or its statement to the effect that it will not be filing evidence.

Q. What kind of evidence should be filed?

A. Evidence must be submitted by way of affidavit or statutory declaration. Any individual signing an affidavit or a statutory declaration may be cross-examined upon request by the other party to the Registrar. The nature of the evidence to be filed will vary depending on the grounds of opposition raised. A representative from a party could, for example, file evidence of prior use. In some cases where use or market investigations are made, affidavits or statutory declarations may be signed by the investigator or the researcher who carried out the investigation. It is important to keep in mind that the deponent must have personal knowledge of the facts set out in the affidavit. Finally, any evidence filed with the Registrar is available to the public.

Q. Is it possible to cross-examine witnesses based on their affidavits or statutory declaration?

A. Yes, it is possible in opposition proceedings to cross-examine any individual who signed an affidavit or statutory declaration. A request for a cross-examination must be filed with the Registrar who will then order the cross-examination under oath of any deponent. As a reminder, the opponent is the first party to file evidence. The applicant’s request to cross-examine the opponent’s deponents has no effect on any outstanding deadline for the applicant to prepare and file its own evidence. However, if the applicant files its request for cross-examination within two months from the effective date of service of the opponent’s evidence, it may request a two month extension of time from the completion of the cross-examinations to file its own evidence. Failure to do so may lead applicant to have to file its evidence prior the completion of the cross-examinations.

Q. Is it possible to file reply evidence?

A. The opponent may decide to file evidence in reply. This is not mandatory, but if the opponent decides to file such evidence, it has one month from the effective date of service of the applicant’s evidence to do so. There is no reply evidence available to the applicant. A party wishing to submit any additional evidence may only do so with leave from the Registrar.

Q. Is it possible not to file evidence at all?

A. Any party who decides not to file evidence must file a statement to this effect with the Registrar. Such statement must be filed within the prescribed deadline to file evidence. If the opponent fails to submit and serve evidence, or a statement that the opponent does not wish to submit evidence, this will result in the opposition being deemed abandoned or withdrawn. For many grounds of opposition, not filing evidence may be fatal.

Q. Are protective/confidentiality orders available?

A. As a general rule, all documents and information filed with the Registrar in an opposition proceeding are available to the public. The Registrar is presently working on a practice notice regarding confidentiality orders. These are consequently not available yet in opposition proceedings. A request to keep evidence confidential will have to be filed with the Registrar prior to submitting the evidence at issue.

Q. Does the Registrar require written representations in an opposition proceeding?

A. Written representations are optional. The Registrar does not require that the opponent or the applicant file written representations. Following the filing of any evidence, each party will receive a notice from the Registrar inviting it to file written representations. The opponent has two months from the notice to serve and file written representations, if they so choose. The applicant has two months following the filing of the opponent’s written representations (or the opponent’s deadline) to file its own. If a party chooses not to file any, that party can still plead orally. Any party seeking to plead orally must request a hearing. It is generally advisable to file written representations in an opposition proceeding, especially if significant evidence has been filed.

Q. Is it possible to oppose a trademark application on the basis of prior use, i.e. without a registration?

A. Yes, it is possible to oppose a trademark application on the basis of prior use either as a trademark or trade name. There is no need to show that the opponent was well-known or famous. The use invoked by an opponent must predate any use made by the applicant prior to the date of its application. On that point, Canadian law does not require that an applicant disclose in a trademark application whether it has used the trademark and since when. It is best to investigate which party has first use before filing a Statement of Opposition.

Q. Is it possible to oppose a registration on the basis of bad faith?

A. Yes, it is possible to invoke the bad faith of an applicant as a ground of opposition. What amounts to bad faith is not detailed in the legislation, it is up to the Registrar and the Courts to determine this. Since this ground of opposition only became available in June 2019, there is still some uncertainty on this front.

Q. Is it possible to oppose on other grounds, that do not involve confusion?

A. Yes, there are a number of grounds of opposition that do not involve asserting confusion with another trademark or a trade name. These include, for example, not having an intention to use the trademark at the time of filing of the opposition, having insufficiently specific goods and/or services, non-compliance with laws or regulations that apply across Canada, etc. Some of these grounds can be rectified during the course of an opposition by making amendments to the application.

Q. Is the fact that a trademark is well known abroad a valid ground of opposition?

A. Little weight will normally be given to the fact that a trademark is well known abroad in the context of an opposition. It is not a proper ground of opposition per se. It may be possible however to use this context to lay the foundation for proper grounds of opposition if, for example, goodwill exists in Canada. This can be notably due to Canadian residents consuming the relevant goods or services abroad, Canadian residents buying the relevant goods and services from Canada or receiving certain goods or services online from the foreign jurisdiction while in Canada. This requires a specific analysis of the factual context.

Q. Does the Registrar actively advise or give notice of potentially confusing applications?

A. With one exception, the Registrar is not required by law to notify third parties of potentially confusing trademarks that are applied for or advertised for opposition. That being said, the Registrar’s trademark examiners are required to advise a relevant party of the publication of a potentially confusing mark if they have approved the application on the basis that confusion is doubtful (in other words in a borderline situation). This occurs in a minority of cases. In order to oppose applications in a timely manner, it is best to retain a trademark surveillance service in order to be advised of potentially confusing applications.

Q. How much time does it take to obtain a decision from the Registrar?

A. The time taken by the Registrar to render a decision will vary. In most cases, decisions are issued within four months following the hearing.

Q. Are costs awarded by the Registrar in an opposition proceeding?

A. Currently, the Registrar does not have the authority to award costs to a party. However, in the next year an amendment to Canada’s trademarks legislation will likely come into force that gives the Registrar the authority to impose payment of costs. Based on recent indications, costs would only be available in certain circumstances, such as if: a trademark application is refused on the ground that it was filed in bad faith; a party requests a hearing and then withdraws their request less than two weeks prior to the scheduled hearing date; or, a party engages in unreasonable conduct which causes undue delay, complexity or expense in a proceeding, among other circumstances.

Q. Is it possible to appeal a decision of the Registrar in an opposition proceeding?

A. Yes. Either party can appeal a decision of the Registrar in an opposition proceeding. Appeals are made to the Federal Court of Canada. Appeals must be filed within two months of from the date of the notice of the decision, or within such extended time as the Federal Court may permit.

Q. What standard does the Federal Court apply in the context of an appeal of a decision in an opposition proceeding?

A. The Federal Court of Canada will apply appellate standards when reviewing decisions of the Registrar. Questions of law will be determined under a standard of correctness. Questions of fact or mixed fact and law will be determined under a standard of palpable and overriding error. If the parties provide material new evidence on appeal, then the Federal Court will hear the case de novo, on a correctness standard.

Q. Is it possible to file new evidence on appeal of a decision of the Registrar in an opposition proceeding?

A. Currently, it is possible to file new evidence on appeal. However, in the next year, an amendment to Canada’s trademarks legislation will likely come into force that will require parties to obtain permission from the Federal Court of Canada before filing new evidence.

Q. Are decisions of the Registrar in opposition proceedings published online?

A. Yes. Decisions of the Registrar in opposition proceedings on the merits are published online. However, not all decisions are published online. Generally speaking, interlocutory or purely procedural decisions are not. Decisions of the Registrar are made available on the Registrar website (https://decisions.opic-cipo.gc.ca/tmob-comc/decisions/en/nav_date.do).

Q. Are hearings held to adjudicate opposition proceedings?

A. Hearings are optional. The Registrar will only hold a hearing if one is requested. Either party may file a request for a hearing. If the applicant has provided written representations, hearings must be requested one month from the time the applicant serves and files them. If the applicant has not, the deadline is one month from the expiry of the applicant’s deadline to serve and file written representations.

Q. Are hearings in opposition proceedings held in person?

A. In-person hearings in opposition proceedings are only granted on an exceptional basis. Generally speaking, the Registrar prefers to hold hearings by videoconference. As a result, videoconference is the default medium for hearings. However, either party may request a hearing by telephone or in person.

Q. How much time does it take to obtain a hearing date in an opposition proceeding?

A. The time it takes to obtain a hearing date will vary. It can take between one-and-a-half and two years. This will depend on the amount of hearings scheduled on the docket. Once the hearing date is scheduled, the Registrar will send a notice with the date, place and time at least 90 days in advance of the scheduled hearing date.

Q. What is the duration of a hearing in an opposition proceeding?

A. Hearings will generally take place over the course of two and a half hours. However, the Registrar can schedule or set aside more time depending on the case.

Q. Are witnesses allowed to testify during the hearing in an opposition proceeding?

A. No. The submission of evidence and cross-examination of witnesses takes place prior to the hearing. During the hearing, evidence is in the form of an affidavit or a statutory declaration.

Q. In what language are opposition hearings conducted?

A. Hearings are held either in English or in French, or both. The Registrar will provide simultaneous interpretation if it has been requested at least one month prior to the scheduled hearing date. The parties are not charged for the simultaneous interpretation.

Q. Is it possible to oppose a trademark application in Canada? If so, when does this occur (i.e. what are the deadlines)?

A. Yes, it is possible to oppose a trademark application in Canada. This opportunity is provided prior to the issuance of a registration. Trademark applications are published in the Trademarks Journal and parties have two months from the date of this publication to initiate an opposition proceeding by filing a Statement of Opposition.

Q. Is it possible to obtain an extension of time to file a Statement of Opposition?

A. Yes, it is possible to obtain an extension of time to oppose a trademark. To the extent a prospective opponent requires more time to investigate possible grounds of opposition, a two month extension of time is available to oppose a national application and a four month extension of time is available to oppose a Protocol application. Such extensions are generally granted for the full two or four month period, as applicable, and do not require any consent from the applicant. Except in the case of a Protocol application, it is also possible at this stage of the proceedings to request an extension of time of up to seven months as a cooling-off period to allow the parties to discuss a possible settlement of the dispute. This type of extension of time requires the consent of the applicant. In the case of a Protocol application, it is not possible at this stage of the proceedings to obtain an additional extension of time beyond the initial four months.

Q. If the deadline to oppose a trademark application is missed, is it possible to ask for a retroactive extension of time?

A. So long as registration has not issued, it is possible to ask for a retroactive extension of time to file a Statement of Opposition. A retroactive extension of time is only available if the failure of the prospective opponent to file a Statement of Opposition by the deadline was not reasonably avoidable. This requires a factual explanation and is not granted automatically.

Q. Why is it important to oppose trademark applications in Canada?

A. There are a three key features of Canadian trademark law that make it important to file oppositions. The first is that if a registration issues, the owner of the registration will normally not be liable to pay damages or account for profits made if the mark violates earlier rights. Monetary remedies can only be claimed after the registration is cancelled or if bad faith, fraud or intentional false declaration in securing the registration can be shown. Moreover, a registration can only be contested before the Federal Court of Canada and in that forum the burden of proof is reversed (the person challenging a registration in the Federal Court bears the burden of proof). Finally, if a registration is unchallenged after its fifth anniversary, it may no longer be possible to cancel it on the basis of prior use of a trademark or trade name.

Q. How long, overall, does a trademark opposition proceeding last?

A. This is quite variable and depends, amongst other factors, on whether evidence is filed by one or both parties, whether witnesses are cross-examined and if extensions of time are obtained by the parties. It is not uncommon that it take four to five years for a decision to issue in an opposition. That being said, if an applicant does not defend a proceeding it may take only a few months for a decision to issue.

Q. What is the cost of filing an opposition?

A. There are two components to this. The first is the official fees. They vary from one year to another. In 2024 the official Registrar fees for filing an opposition proceeding are CAD $1040.00. The second component are the professional fees to draft the Statement of Opposition, which must include the specific grounds of opposition that are being invoked. This may require some investigation, for example to determine which party used the mark first in Canada. The professional fees will vary from one matter to another.