Trademark Opposition Procedure in Canada

Under the Canadian Trademarks Act, any person with valid grounds may oppose a trademark application once it is advertised in the Canadian Trademarks Journal. The opposition process is administered by the Canadian Intellectual Property Office (CIPO).

Procedure of Trademark Opposition in Canada:

1. Statement of Opposition :

   The opponent must file a Statement of Opposition with the Registrar, citing one or more grounds as specified in the Trademarks Act within 2 months of the date of publication of the mark in the journal as published on CIPO’s website.

   
   

   Extension Available: Extension of two-month period allowed by CIPO to file a statement of opposition.

2. Counter Statement

   The applicant must file a counter statement within 2 months of receiving the Statement of Opposition. Failure to do so within the prescribed time, the application will be deemed abandoned.

   
   

   Extension Available: 1 month’s extension with sufficient reasons

3. Evidence and Cross-Examination:
   
   
   • Opponent’s Evidence:

     The opponent’s evidence must be filed within 4 months of receiving the counter statement and the applicant may cross-examine within 2 months of receipt.

   
   
   • Applicant’s Evidence: The Applicant must file their evidence within 4 months of receiving the opponent’s evidence and the Opponent may cross-examine within 2 months of receipt.
   
   

   Extension Available : Opponent will have the option of filing the extension of time up to 2 months along with the Applicant’s consent to file the evidence in support of the Opposition. Applicant will have the option of filing the extension of time up to 2 months along with the Opponent’s consent to file the evidence in the support of the counterstatement.

4. Reply Evidence by Opponent :

   The opponent may file additional evidence in reply to the applicant’s evidence within 1 month of receiving the applicant’s evidence and the Applicant may cross-examine the reply evidence.

   
   

   Extension Available: Up to 1 month extension of time is available with the Opponent to file the reply to the evidence submitted by Applicant and the request for the same can be filed along with the Applicant’s consent.

5. Written Submission :

   The Registrar will issue a notice once the evidence stage is finished. Through the notice, the Registrar will invite both the parties they may submit and serve written representations. Written Submissions must be submitted within 2 months of the Registrar’s notice (per Section 57(1) of the Regulations)

   
   

   Extension Available: a 1 month extension of time is available to the parties on consent.

6. Hearing :

   Registrar will not hold a hearing unless either party files a request for the same. Oral Hearing Request must be filed within 1 month of either the effective date of service of the applicant’s written representations or the expiry of the submission deadline.

   
   

   Extension Available: Bother the parties have up to one year from filing of written arguments

7. Decision :

   The Registrar will issue a decision following the oral hearing or based on written submissions if no hearing is requested.

8. Appeal :

   The Registrar’s decision may be appealed to the Federal Court of Canada within 2 months of the decision date.