Canadian Trademark Opposition: TMOB Proceedings

After a CIPO examiner approves a trademark application, it is advertised in the Trademarks Journal for a two month opposition period. In that window, any person can challenge the application by filing a Statement of Opposition with the Trademarks Opposition Board (TMOB).

Whether you want to stop a conflicting application or defend your own, the TMOB process rewards the same things: specific pleadings, evidence filed on time, and a record you are happy to live with on appeal. This guide walks through every stage.

Before you get here: most conflicts are cheaper to solve at the search stage. Start with a free trademark check to see what is already on the register.

What the TMOB is

The Trademarks Opposition Board is an administrative tribunal inside CIPO. It handles two things:

• Oppositions, which challenge pending applications before registration
• Section 45 proceedings, which cancel registered marks for non use

TMOB decisions bind the parties and can be appealed to the Federal Court of Canada.

The opposition timeline

1. Advertisement and the opposition window

Once the application is advertised, the opposition period runs for two months. An extension of time to oppose can be requested before that deadline expires, and the Board publishes the benchmark it currently allows, so check the practice notice in force rather than assuming a fixed number of months. If nobody opposes, the mark proceeds to registration.

2. Filing the Statement of Opposition

To start the proceeding, the opponent files a Statement of Opposition setting out the grounds and the material facts behind each one. Common grounds include:

• Non registrability under section 38(2)(b), because the mark is not registrable under section 12
• Non entitlement under section 38(2)(c), because the applicant is not the person entitled to registration
• Non distinctiveness under section 38(2)(d), because the mark does not distinguish one source
• Bad faith under section 38(2)(a.1), added in the 2019 amendments

The CIPO filing fee for a Statement of Opposition is CAD 789.43 per application opposed, and CIPO indexes its fees each January. Legal costs are separate and are usually the larger number.

Boilerplate pleadings do not survive scrutiny. Plead the specific registrations or common law rights you rely on, the dates, the channels of trade, and the facts that connect each ground to the application you are attacking.

3. Counter Statement

The applicant has two months to file a Counter Statement answering the opposition. Miss it and the application is deemed abandoned, which is the single most avoidable loss in Canadian practice.

4. Evidence

Evidence goes in by affidavit, in a set order: the opponent's evidence, then the applicant's, then the opponent's reply evidence, which is limited to answering what the applicant raised. Each stage has a prescribed deadline and extensions are available through the Board.

Two mechanics decide most files:

• Cross examination on affidavits is available, and it is often decisive. Use it where credibility or methodology is in issue.
• The standard is the balance of probabilities, and the party carrying the onus has to tip it with relevant, first hand material.

5. Written arguments and hearing

After evidence closes, both sides may file written arguments, and either side may request an oral hearing. The Board then issues a written decision.

What good evidence looks like

The Board decides on the record in front of it, so front load your best material.

• Confusion: dated packaging and web pages, sales and market share figures, advertising spend, evidence of the channels of trade, and a properly designed survey where the budget justifies one.
• Non distinctiveness: third party marketplace examples, trade publications, glossaries and industry usage showing the term is ordinary or descriptive in Canada.
• Bad faith: prior dealings, emails, distributorship or settlement documents, domain history, and anything showing knowledge of your mark.
• Claimed use: invoices, shipping records and specimens, or the material that contradicts the other side's use claims.

Affidavit practice worth copying: use an affiant who actually knows the facts, tie every exhibit to a pleaded fact, capture dates and sources when you print online material, explain the method behind any data compilation, and prepare your affiant for cross examination. Keep reply evidence tight. The Board will not let you re argue your case under the label of reply.

Grounds in more detail

Confusion with an earlier mark

The most common ground. Under section 6(5) of the Trademarks Act the Board weighs:

• the inherent distinctiveness of the marks and how far each has become known
• how long each mark has been in use
• the nature of the goods, services or business
• the nature of the trade
• the degree of resemblance in appearance, sound and idea suggested

Descriptiveness

An opponent can argue the mark is clearly descriptive or deceptively misdescriptive and therefore not registrable under section 12(1)(b).

Non distinctiveness

The question is whether the mark actually distinguishes the applicant's goods or services from everyone else's in Canada.

Bad faith

Since the 2019 amendments, bad faith is an express ground. It covers filings made to block others, or filings copying a competitor's mark with no genuine intention to use.

Costs in opposition proceedings

The Board can award costs, but awards are modest and exceptional. The award is calculated as a multiple of the prescribed opposition filing fee rather than as a fixed dollar range, and a higher multiple can be ordered where a party has behaved unreasonably. In practice each side carries its own legal costs, so budget on that basis: evidence gathering, cross examinations, written submissions and any hearing.

Surveys, translations and expert reports are the line items people forget. Spending on evidence early usually costs less than trying to repair a thin record later.

Cooling off and settlement

The Board allows the parties to request a cooling off period. Timelines are suspended while you negotiate, and either party can end it and restart the clock. Settlement levers that actually work:

• Narrow the identification so the goods or services no longer overlap
• Channel or territory carve outs where the parties trade differently
• Coexistence terms on get up, color or tagline
• A transition period with a rebranding timetable and a sell off window

Put any agreement in writing, and record limitations or amendments with the Registrar where that is appropriate.

Appeals to the Federal Court

Either party can appeal a TMOB decision to the Federal Court of Canada under section 56 of the Trademarks Act, normally within two months of the decision. Since the amendments in force on 1 April 2025, the appeal is no longer a fresh rehearing:

• New evidence may be filed only with leave of the Court under section 56(5). Without leave, the Court reviews the record that was before the Registrar.
• On a leave request the Court looks at whether the evidence is relevant and material, and at why it was not put before the Board in the first place. Evidence that could have been filed at the TMOB is the hardest kind to get in.
• Where no new evidence is admitted, the Court reviews the Board's decision on a deferential standard.

The practical consequence is simple: build the record you are willing to be judged on, because there is no longer an easy second chance.

Section 45: clearing non use from the register

Opposition keeps problem applications out. Section 45 removes registrations that are no longer used.

For registrations more than three years old, the Board can require the owner to show use in Canada during the relevant period, or to justify the non use. If the owner cannot, the registration is expunged or narrowed. The Registrar can also start these proceedings on its own initiative, not only at a third party's request.

That cuts both ways:

• As a challenger, if the mark blocking you sits on a registration that is barely used, a section 45 notice can be faster and cheaper than an opposition.
• As an owner, keep a use file now: dated invoices, packaging, screenshots and shipping records per class. The notice arrives without warning and the response window is short.

Our trademark monitoring service watches for conflicting Canadian filings so you see them inside the opposition window rather than after registration.

Strategy

If you are opposing

1. Move inside the two month window, or request an extension before it closes.
2. Test your grounds honestly. Weak oppositions burn money and can attract a costs award.
3. Gather evidence before you plead, so the pleadings match what you can prove.
4. Consider negotiation early. Many oppositions end in coexistence or an amendment.
5. Plan for two to three years from Statement of Opposition to decision.

If you are defending

1. File the Counter Statement within two months. Nothing else matters if you miss this.
2. Weigh settlement seriously, especially where a narrower identification solves the conflict.
3. Build evidence of use, distinctiveness and market presence, with dates.
4. Attack the opponent's record, through cross examination where credibility matters.
5. Plan the timeline into your launch, because opposition can add years to registration.

If the dispute is really about use in the market rather than the register, a cease and desist letter may be the faster tool, and the two can run in parallel.

Sources

• CIPO, Canadian Intellectual Property Office
• Trademarks Act (R.S.C., 1985, c. T-13)