What is a trademark opposition?

A trademark opposition is a contested proceeding before the Trademarks Opposition Board in which a third party asks the Registrar of Trademarks to refuse a pending trademark application. After a trademark application has been examined and advertised in the Trademarks Journal, any person can file a statement of opposition within the statutory window. The applicant then files a counterstatement, the parties exchange evidence and written argument, and in some cases conduct cross-examinations and an oral hearing. A trademark opposition is litigation-style in structure but takes place administratively rather than in court.

When you should consider opposing a trademark

Blocking a confusingly similar mark. A trademark opposition is the primary mechanism to prevent registration of a mark that is confusingly similar to your registered, pending, or common law rights. Allowing a confusingly similar mark to register can make later enforcement more difficult and more expensive.

Protecting the scope of your registered or pending mark. A trademark opposition can narrow or defeat an application that would otherwise create overlapping rights in the same commercial space. Proactively opposing reduces the risk of marketplace confusion and preserves the distinctiveness of your own mark.

Addressing bad faith or improper applications. A trademark opposition can raise bad faith, non-entitlement, and non-distinctiveness grounds where an applicant has filed for a mark the applicant does not intend to use or is not entitled to register. These grounds are particularly relevant where the applicant has targeted a competitor’s brand or a well-known mark.

Preserving enforcement leverage. A trademark opposition can be a faster and less expensive alternative to post-registration challenges such as expungement proceedings in the Federal Court. Resolving the dispute at the opposition stage generally preserves enforcement leverage and avoids the higher costs of litigation.

Relevant laws and regulations

Trademarks Act, RSC 1985, c T-13. Canada’s federal trademarks legislation, which sets out the statutory grounds of opposition, the confusion test, and the registrability grounds that frame every trademark opposition.

Trademarks Regulations, SOR/2018-227. The federal regulations under the Trademarks Act, which set out the procedural rules for a trademark opposition, including deadlines, cooling off periods, evidence requirements, and cross-examination procedures.

Common legal issues

Evidence and the evidentiary burden. A trademark opposition turns on evidence. The opponent carries an initial evidential burden on each ground, and the applicant then carries the legal burden to show the mark is registrable. Evidence is typically filed by affidavit and can include evidence of usage, marketplace evidence, state of the register evidence, and survey evidence. Weak or missing evidence is one of the most common reasons a trademark opposition fails for either party.

Confusion analysis under section 6. The confusion ground is frequently pleaded in a trademark opposition. The Trademarks Act sets out a multi-factor test under section 6 that considers the inherent distinctiveness of the marks, the length of time the marks have been in use, the nature of the goods and services, the nature of the trade, and the degree of resemblance between the marks in appearance, sound, and idea suggested.

Non-entitlement under section 16. A trademark opposition can raise non-entitlement grounds where the opponent claims prior use or prior filing of a confusingly similar mark in Canada. The opponent must establish its prior use as of the relevant date, and must also establish that the prior use had not been abandoned as of the date of advertisement. Non-entitlement grounds can be powerful for opponents with unregistered common law rights, but they require careful evidence of use.

Non-distinctiveness under section 2. A trademark opposition can raise non-distinctiveness on the basis that the applicant’s mark does not actually distinguish the applicant’s goods and services from those of others. This ground can be used against marks that are weakly distinctive, heavily diluted in the relevant marketplace, or used by multiple third parties in a way that undermines the source-identifying function of the mark.

Scope of goods and services and overclaiming. A trademark opposition frequently targets the scope of the goods and services in the application, rather than the mark itself. Applicants sometimes file for goods and services well beyond their actual or intended use, and a trademark opposition can be used to narrow the application through settlement or through a decision that finds the applicant did not establish use or proposed use across the full scope.

Frequently asked questions

Who can file a trademark opposition? Any person can file a trademark opposition within the statutory window after the trademark is advertised, provided the statement of opposition raises a valid ground under the Trademarks Act. The opponent does not need to own a registered or pending mark, although opponents most often are prior rightsholders.

How long does a trademark opposition take? A full trademark opposition can take two to four years from the filing of the statement of opposition through to a decision, depending on the cooling off periods, evidence phases, cross-examinations, and whether an oral hearing is requested. Often, however, matters are settled before this by the parties.

Can a trademark opposition be settled? Yes. Most trademark oppositions are resolved through settlement. Settlement can involve co-existence agreements, amendments to the goods and services, consents, withdrawals, or broader commercial arrangements between the parties.

What happens if the applicant loses a trademark opposition? If the Registrar refuses the application following a trademark opposition, the applicant can appeal to the Federal Court. The appeal can include new evidence, and the standard of review depends on the issue on appeal.

What happens if the opponent loses a trademark opposition? If the trademark opposition is rejected, the application generally proceeds to registration. The opponent retains the ability to challenge the registration through other proceedings, including expungement in the Federal Court and section 45 non-use cancellation proceedings in appropriate circumstances.