Defending Your Brand in a CIPO Trademark Opposition Proceeding

When you file a trademark application, you're hoping for a clear path to registration. But what happens when a competitor, a major corporation, or even a small business owner decides to challenge your right to register your brand?

You enter the realm of the Trademarks Opposition Board (TMOB), where your application transforms from an administrative process into a structured, quasi-judicial legal battle.

As a trademark lawyer at Alphabetica Law, I guide clients through the stringent rules, deadlines, and evidence requirements of CIPO opposition proceedings. This is where professional expertise is non-negotiable—a single missed deadline or an error in evidence submission can be fatal to your application or your opponent’s challenge.

Stage 1: The Initial Challenge—Statement of Opposition

The opposition process begins when an Opponent (any person or entity) files a challenge with the TMOB.

The Deadline is Hard and Fast

Any person who wishes to oppose an application must file a Statement of Opposition within two months after the trademark application is advertised in CIPO's online journal. This deadline is strictly enforced.

The Legal Grounds

The Statement of Opposition must be based on one or more of the grounds set out in the Trademarks Act. These grounds must be stated in sufficient detail to allow the Applicant to understand and reply to the challenge. Common grounds include:

• Confusion: The public is likely to be confused between the Applicant's trademark and a mark previously used or registered by the Opponent.

• Non-Entitlement: The Applicant was not the first to use the mark in Canada.

• Descriptiveness/Unregistrability: The mark is clearly descriptive or deceptively misdescriptive of the goods or services.

The Applicant's Response: The Counter Statement

Once the Opponent's challenge is accepted and forwarded by the Registrar, the Applicant has a strict two-month deadline to file a Counter Statement. This statement is often simple, declaring the Applicant’s intention to respond to the opposition. Failure to file the Counter Statement within the prescribed time will result in the application being deemed abandoned.

Stage 2: The Core of the Battle—The Evidence Phase

The opposition proceeding is decided almost entirely on the written evidence and arguments presented.

Strict Timelines for Evidence

The TMOB sets out specific, sequenced deadlines for submitting evidence:

1. Opponent's Evidence: The Opponent must submit their evidence (usually an Affidavit or Statutory Declaration) to the Registrar and serve a copy on the Applicant. This evidence must prove the grounds of opposition (e.g., proof of use of their prior mark, evidence of reputation, survey data).

2. Applicant's Evidence: The Applicant then has a set period to submit and serve their own evidence. This typically rebuts the Opponent's claims and shows reasons why the Applicant's mark should be registered (e.g., proof of use, lack of consumer confusion).

3. Opponent's Reply Evidence (Optional): The Opponent may file additional evidence, but it is strictly limited to replying to the issues raised in the Applicant's evidence.

The Golden Rule: All evidence submissions must be accompanied by proof of service on the opposing party. If a document is filed with the Registrar, a copy must be sent to the opposing party on the same day it is sent to the Registrar.

Cross-Examinations: Testing the Evidence

A key part of the opposition process is the opportunity for a party to request the cross-examination of the person who provided an affidavit or statutory declaration. This is a powerful tool to test the credibility and scope of the opponent's claims. If a cross-examination takes place, the transcript and any answers to undertakings must be submitted and served according to specific deadlines—failure to comply can result in the entire affidavit being deemed inadmissible.

Stage 3: The Final Arguments and Decision

Written Representations and Hearings

After the evidence phase closes, both parties have the opportunity to file Written Representations (legal arguments) summarizing their case and analyzing the evidence presented.

Finally, either party may request an oral Hearing before the TMOB, though the TMOB decides most cases based solely on the written record. Hearings are typically conducted via videoconference and provide a final opportunity for legal counsel to present their strongest points to the Board.

The Registrar’s Decision and Appeal

The Registrar will then issue a decision, either rejecting the opposition (allowing the application to proceed to registration) or upholding the opposition (refusing the trademark application).

Importantly, the final decision of the Registrar under the Trademarks Act may be appealed to the Federal Court of Canada.

Your Legal Advantage in an Opposition

An opposition proceeding can take years and become extremely complex, costly, and time-consuming. For businesses, this is a distraction from core operations.

At Alphabetica Law, we manage every critical step:

• Strategic Pleadings: We ensure all opposition grounds are robustly and properly pleaded from the outset, whether we are initiating the challenge or defending your application.

• Evidence Mastery: We strategically craft, collect, and file admissible evidence and manage the cross-examination process to expose weaknesses in the opponent’s case.

• Deadline Management: We rigorously adhere to every CIPO deadline, protecting your rights against abandonment or dismissal on technicalities.

If your valuable trademark application has been challenged, or if a competitor’s mark poses a risk to your brand, you need expert counsel immediately.

Contact Alphabetica Law today to discuss your opposition strategy and protect your position in the Canadian marketplace.

Reference:  CIPO Practice Notice in trademark opposition proceedings