Canadian Trademark Opposition: Proceedings Before the Trademarks Opposition Board

Canadian Trademark Opposition: Proceedings Before the Trademarks Opposition Board

After a trademark application is approved by the CIPO examiner, it is published in the Trademarks Journal for a 2-month opposition period. During this window, any person can challenge the application by filing a Statement of Opposition with the Trademarks Opposition Board (TMOB).

Whether you're considering opposing a conflicting application or defending your own mark against an opposition, understanding the TMOB process is essential. This guide covers every stage of Canadian trademark opposition proceedings.

Pro tip: Start with a free trademark check to identify potential conflicts before they reach the opposition stage.

What Is the Trademarks Opposition Board?

The Trademarks Opposition Board (TMOB) is an administrative tribunal within CIPO that adjudicates trademark opposition proceedings. The TMOB handles:

• Opposition proceedings — challenges to pending trademark applications
• Section 45 proceedings — cancellation actions for non-use of registered marks

TMOB decisions are binding but can be appealed to the Federal Court of Canada.

The Opposition Timeline

Phase 1: Publication and Opposition Period

After examination approval, the mark is published in the Trademarks Journal:

• 2-month opposition period from the date of publication
• Extension available — a potential opponent can request a single extension of time (typically 2 months) by filing a request before the deadline
• If no opposition is filed, the mark proceeds to registration

Phase 2: Filing the Statement of Opposition

To commence opposition, the opponent must file a Statement of Opposition (Form TM7) that sets out the grounds of opposition. Common grounds include:

• Non-registrability (Section 38(2)(b)) — the mark is not registrable under Section 12
• Non-entitlement (Section 38(2)(c)) — the applicant is not the person entitled to registration
• Non-distinctiveness (Section 38(2)(d)) — the mark is not distinctive at the relevant date
• Bad faith (Section 38(2)(a.1)) — the application was filed in bad faith (added in 2019 amendments)

The filing fee for a Statement of Opposition is CAD $1,115.08 per application opposed.

Phase 3: Counter-Statement

The applicant has 2 months to file a Counter-Statement responding to the opposition. If no Counter-Statement is filed, the application is deemed abandoned.

The Counter-Statement should deny the allegations in the Statement of Opposition and set out the applicant's position.

Phase 4: Evidence Rounds

TMOB proceedings follow a structured evidence exchange:

1. Opponent's evidence — the opponent files evidence supporting their grounds of opposition (affidavits, declarations)
2. Applicant's evidence — the applicant files responding evidence
3. Opponent's reply evidence — the opponent may file reply evidence (limited in scope)

Each evidence stage has prescribed time limits, and extensions are available through TMOB.

Phase 5: Written Arguments and Hearing

After evidence is complete:

• Both parties may file written arguments summarizing their positions
• Either party may request an oral hearing before the TMOB
• The TMOB issues a written decision

Grounds for Opposition: Detailed Analysis

Confusion with an Existing Mark (Most Common)

The most frequently raised ground is that the applied-for mark is confusingly similar to the opponent's existing mark. TMOB considers the factors set out in Section 6(5) of the Trademarks Act:

• The inherent distinctiveness of the marks and the extent to which they have become known
• The length of time each mark has been in use
• The nature of the goods, services, or business
• The nature of the trade
• The degree of resemblance between the marks (appearance, sound, ideas 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 opponent can argue the mark does not actually distinguish the applicant's goods/services from those of others in Canada.

Bad Faith

Since the 2019 amendments, bad faith filing is an explicit ground for opposition. This covers situations where the applicant filed with no genuine intention to use the mark.

Costs in Opposition Proceedings

TMOB can award costs to the successful party, but awards are typically modest and follow the TMOB's standard scale:

• Costs are awarded only in exceptional cases, and the award is calculated as a multiple of the prescribed opposition filing fee (now CAD $1,115.08) rather than as a fixed dollar range
• Each party generally bears their own legal costs regardless of the outcome
• A higher multiple of the filing fee may be ordered where a party has engaged in unreasonable conduct

Strategic Considerations

For Opponents (Challenging an Application)

1. Act within the 2-month window — or request an extension promptly
2. Assess the strength of your grounds — weak oppositions waste resources and may result in cost awards
3. Gather evidence early — documentary evidence of your mark's use and reputation
4. Consider negotiation — many oppositions settle through coexistence agreements or amendments
5. Budget realistically — TMOB proceedings can take 2-3 years and involve significant legal costs

For Applicants (Defending Against Opposition)

1. File your Counter-Statement on time — missing the 2-month deadline means abandonment
2. Evaluate settlement — consider whether coexistence or amendment is a viable resolution
3. Prepare strong evidence — evidence of your mark's use, distinctiveness, and market presence
4. Challenge the opponent's evidence — identify weaknesses in the opposition case
5. Consider your timeline — opposition can add 2-3 years to the registration process

GTC advantage: Our trademark opposition service provides comprehensive support for both filing and defending opposition proceedings before the TMOB.

Cooling-Off Period

The TMOB allows parties to request a cooling-off period to negotiate settlement. During this period:

• Proceeding timelines are suspended
• Parties can negotiate coexistence agreements, consents, or amendments
• Either party can request the cooling-off period to end and resume the proceeding

Cooling-off periods can last several months and often lead to successful resolution without a full hearing.

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. Following the amendments in force on 1 April 2025, the appeal is no longer a full de novo rehearing:

• New evidence may now be filed only with leave of the Federal Court under Section 56(5); without leave, the Court reviews the record that was before the Registrar
• Where no new evidence is admitted, the Court generally reviews the TMOB's decision on a deferential standard
• The Court can affirm, reverse, or vary the TMOB's decision

Federal Court appeals are typically filed within 2 months of the TMOB decision.

Protect Your Canadian Trademark Rights

Whether you're filing a new application or need to defend against an opposition, proactive strategy is key. Start with a free trademark check to assess your position, or learn more about our trademark opposition services.

*This guide reflects current TMOB procedures and the Trademarks Act as of January 2026.*