Canadian Trademark Opposition Proceedings

By: Christopher Heer, Annette Latoszewska, Rares Minecan, Michelle Huong, Stefanie Di Giandomenico, Malcolm Harvey, Daryna Kutsyna, Dominic Cerilli | Last updated: October 2, 2026

A Canadian trademark opposition is a proceeding in which a third party challenges an application to register a trademark. The Trademarks Opposition Board (TMOB), acting on behalf of the Registrar of Trademarks, determines whether the application should be refused for some or all of its goods or services.

Whether you want to protect your brand against another application or defend your own application, start by confirming the deadline and assessing the available grounds, evidence and commercial options.

If your trademark application has been opposed

Check the notice sent by the Registrar and confirm the response deadline. To continue defending the application, you generally must file a counterstatement with the Registrar and serve it on the opponent within two months after the Registrar forwards the statement of opposition. Failure to file and serve it on time can result in the application being deemed abandoned.

The counterstatement can simply state that you intend to respond to the opposition. You do not have to submit your evidence or a detailed defence at this stage. An early assessment can identify the grounds you need to address, the evidence to preserve and whether settlement is worth exploring. See CIPO guidance for applicants.

If you want to oppose another trademark application

The ordinary deadline to file a statement of opposition is two months after the application is advertised in the Trademarks Journal. Confirm the advertisement date, identify the relevant grounds and assess the evidence supporting your position. The prescribed filing fee must also be paid.

An extension may be available, but it must be requested and granted under the applicable rules. Do not assume that negotiations with the applicant extend the opposition deadline. Consult CIPO guidance for opponents and obtain advice promptly if the deadline is close or has passed.

The cost of a Canadian trademark opposition

Government fees

The government fee to file a statement of opposition is separate from professional fees and other expenses. CIPO lists the following amounts, in Canadian dollars:

The applicable fee depends on the date the Registrar receives payment.

Check CIPO’s current trademark fee schedule before payment. Other requests, including some extension requests, may attract additional government fees.

Professional fees and expenses

The work required depends on the grounds raised, the evidence, the number of affiants and whether the parties settle or proceed to a decision. An initial budget should distinguish between:

Government fees, court reporter charges, translations and other necessary disbursements may be additional. A staged budget helps you decide how much to invest as the merits and commercial options become clearer.

Costs awards against a party

Since April 1, 2025, the Registrar may award prescribed costs on request in specified circumstances. These include refusal on a bad faith ground, certain divisional applications, withdrawal of a hearing request less than 14 days before the hearing, and unreasonable conduct causing undue delay or expense.

A successful party does not automatically recover its legal fees. The costs regime has specific eligibility, timing and transitional rules, and costs cannot be awarded if the proceeding ends before the final decision. See CIPO’s practice notice on costs awards.

The opposition process and key deadlines

The table summarizes ordinary procedural periods. Filing and service are separate requirements. Extensions, case management directions and special rules may affect a particular file, so confirm the applicable deadline from the legislation, notices and orders.

See the Trademarks Regulations for the detailed rules. At each party’s main evidence stage, that party must file and serve either evidence or a statement that it does not intend to submit evidence. If neither is filed and served by the applicable deadline, the opposition is deemed withdrawn in the case of the opponent’s default, or the application is deemed abandoned in the case of the applicant’s default. The opponent’s subsequent reply evidence is optional, and no statement declining to file reply evidence is required.

Extensions and cross-examinations

Extensions are discretionary. For example, the ordinary benchmark extension for reply evidence is up to one additional month with the other party’s consent. A request for cross-examination does not, by itself, extend an evidence deadline. The TMOB opposition practice notice explains the available extensions and special arrangements.

Cross-examination allows a party to question a witness about affidavit or declaration evidence. It may be requested after that evidence is filed and before the notice inviting written arguments. Videoconferencing is the Registrar’s preferred method; physical attendance in Canada is not a universal requirement.

How long a proceeding takes

A contested opposition involves several stages and can take years. The overall duration depends on evidence, cross-examinations, extensions, settlement discussions and decision scheduling. A negotiated resolution or an early end to the proceeding may shorten the process. The periods in the table should not be treated as a prediction of the total time to a decision.

Grounds for opposing a Canadian trademark application

An opposition must rely on a legally available ground and set out enough detail for the applicant to respond. Concern about commercial competition alone is insufficient. Subsection 38(2) of the Trademarks Act provides seven grounds:

Application requirements

The application does not comply with subsection 30(2), for example because its goods or services are not described in ordinary commercial terms. Classification under subsection 30(3) is excluded from this ground.

Bad faith

The application was filed in bad faith. This is a distinct allegation that requires a factual basis. An assessment should identify the conduct relied on and the evidence available to support the allegation.

Registrability

The mark is not registrable under section 12. Examples include confusion with a registered trademark or a mark that is clearly descriptive of the relevant goods or services, subject to the Act’s applicable qualifications and exceptions.

Entitlement to registration

The applicant is not entitled to registration under section 16, for example because of relevant earlier trademark or trade-name rights. The applicable dates and requirements concerning prior use, earlier applications and abandonment need to be assessed.

Distinctiveness

The mark does not distinguish, and is not adapted to distinguish, the applicant’s goods or services from those of others. Evidence of another business’s reputation or marketplace use may be relevant. The issue depends on the mark, evidence and applicable legal test; see the statutory definition of distinctive.

Absence of use and proposed use

At the Canadian filing date, the applicant was neither using nor proposing to use the mark in Canada for the specified goods or services. For this ground, a foreign priority claim does not change the relevant date.

Entitlement to use

At the Canadian filing date, the applicant was not entitled to use the mark in Canada for the specified goods or services. This ground also uses the Canadian filing date without the benefit of a foreign priority claim.

Confusion and Nice classes

Different Nice classes do not prevent a finding of confusion. The confusion test in section 6 considers all surrounding circumstances, including resemblance, distinctiveness and reputation, length of use, the goods or services and the nature of the trade. Class numbers alone do not establish that two marks can coexist.

Applications under the Madrid Protocol

A Canadian application arising through the Madrid Protocol is subject to additional rules. section 104 of the Trademarks Regulations addresses goods or services outside the scope of the international registration, and special opposition timing rules also apply. See CIPO’s guidance on Protocol applications.

Evidence and confidential information

Start preserving relevant records early. Depending on the grounds, useful records may include dated sales documents, packaging, advertising, archived webpages, distribution records and correspondence concerning the disputed mark. Keep records showing when, where and how the mark was used. Identify affiants who can explain the records from personal knowledge.

Evidence is generally submitted by affidavit or statutory declaration, with supporting exhibits. Certain documents in the Registrar’s official custody may be submitted as certified copies. Evidence preparation should address the particular grounds and relevant dates. See CIPO’s explanation of evidence.

Opposition records are generally public. A party seeking a confidentiality order must request it before submitting the evidence it wishes to protect. Follow the Registrar’s directions about when and how that evidence may be submitted while the request is pending. Confidentiality orders are exceptional. Requesting an order does not automatically extend the evidence deadline; any necessary extension must be requested separately. See CIPO’s practice notice on confidentiality orders.

The Registrar also has case management powers to address how a proceeding advances. Complex or related proceedings may require tailored directions, including directions about timing.

Settlement and possible outcomes

Resolving the dispute by agreement

Settlement can be considered throughout the proceeding. Depending on the commercial circumstances, an agreement may address the goods or services, how the marks are presented or used, and steps to withdraw an opposition or abandon an application. Any agreed amendment must comply with the applicable rules.

A coexistence agreement should distinguish between the parties’ contractual promises about use and the scope of any trademark registration. Discussions should also address costs and the steps each party must take to implement the settlement. Learn more about our IP agreement services.

A decision on the application

The Registrar may refuse the application in full, reject the opposition, or refuse the application for some goods or services and reject the opposition for the remainder. An application or opposition may also end through abandonment or withdrawal.

An opposition concerns registration. It does not itself award infringement damages or order an injunction against use. Equally, withdrawing an application does not resolve every possible dispute about using the mark. Related trademark infringement or passing off issues may require separate advice.

Appealing a decision

Under section 56 of the Trademarks Act, an appeal lies to the Federal Court, ordinarily within two months after the Registrar dispatches notice of the decision. The Court may allow additional time. Since April 1, 2025, introducing additional evidence on appeal requires the Court’s leave. Prepare the opposition record carefully rather than assuming missing evidence can be added later.

Where the trademark is already registered

Opposition is a procedure for an application before registration. If the mark is already registered, other procedures may be relevant, including non-use cancellation or a court challenge to validity. Their requirements differ. Read about challenging a registered trademark in Canada.

How Heer Law can help

Heer Law assists trademark applicants and brand owners with opposition proceedings, settlement negotiations and related disputes. An initial assessment can address the immediate deadline, the available grounds or responses, the evidence required and the practical options for your business.

Stephanie Chong, a partner and registered trademark agent at Heer Law, represents clients before the Trademarks Opposition Board and in the Ontario and Federal Courts. Our trademark services and IP litigation services can address the registration and enforcement issues arising from a dispute.

Book a free 30-minute introductory appointment to discuss your situation and the services we can provide. A detailed assessment of the merits, document preparation and representation are paid services whose scope and fees are discussed separately. Have the application number, any TMOB correspondence and known deadlines available for the appointment.