Resolving Oppositions Before the Trademark Opposition Board

This month we outline the procedures for resolving trademark oppositions including written argument, hearing, decision, and costs.

Submission of Written Arguments

After all evidence has been filed, the Registrar will notify the parties that they may submit written representations or arguments. Each party has two months to submit their arguments or a statement indicating they do not wish to do so. The opponent submits its argument first, followed by the applicant, who has two months to respond.

Procedure for Requesting a Hearing

Within one month after the applicant's service on the opponent of written representations or its statement is effective, or if no such service is effective within the two-month period for submission of written representations, within one month after that two-month period, a party wishing to make representations to the Registrar at the hearing must file a request indicating:

• Whether they intend to make representations in English or French and whether they will require simultaneous interpretation if the other party makes representations in the other official language.

• Whether they wish to make representations in person, by telephone, by video conference, or by another means of communication offered by the Registrar, and any information necessary to permit the use of the chosen means of communication.

A party may make representations at the hearing only if they file a request under the procedure described above.

The Decision-Making Process

As an administrative tribunal, the Trademark Opposition Board is the master of its own procedure, subject to legislative restrictions and the principles of fairness. The Hearing Officer may exercise discretion to verify the register to confirm the status of trademarks but will generally do so only where reference is made in the statement of opposition to a registration that supports an allegation under s. 12(1)(d) of the Act.

After considering the evidence and representations of the opponent and the applicant, the Hearing Officer must refuse the application, reject the opposition, or refuse the application with respect to one or more goods or services specified in it and reject the opposition with respect to the others. The Hearing Officer may not take up considerations not raised in a statement of opposition. If matters not raised by the opponent in its statement of opposition are considered, the Hearing Officer exceeds jurisdiction, as these matters are beyond the powers conferred by the Act.

The Hearing Officer has no jurisdiction to amend or strike out a registration. Such changes can only be made under subsection 57(1) by the Federal Court.

A decision by the examination section of the Trademarks Office is not binding on the Board and has no precedential value for the Board. The examination section has no evidence available to it, and the burden on the applicant differs.

The doctrine of stare decisis does not apply to decisions of the Opposition Board, but the principle of comity of decision-making can be applied.

Cost Awards Effective April 1, 2025

Effective April 1, 2025, a Hearing Officer may, on request, award costs against a party to an opposition proceeding in these amounts:

• Bad Faith Application: If the party’s application for the registration of a trademark is refused because it was filed in bad faith regarding one or more of the goods or services, an amount ten times the fee for filing a statement of opposition ($10,400).

• Divisional Application: If the party files a divisional application on or after the day on which the original application is advertised under subsection 37(1) of the Act, an amount two times the fee for filing a statement of opposition ($2,080).

• Withdrawal of Hearing Request: If the party withdraws a request for a hearing less than 14 days before the day on which the hearing is scheduled to take place, an amount two times the fee for filing a statement of opposition ($2,080).

• Unreasonable Conduct: If the party engages in unreasonable conduct that causes undue delay or expense in the proceeding, an amount five times the fee for filing a statement of opposition ($5,400).

  
  

Parties to an opposition are not subject to cost awards for acts that took place before April 1, 2025.

If you have questions, please contact me at mckeown@gsnh.com.

John McKeown

Goldman Sloan Nash & Haber LLP

480 University Avenue, Suite 1600

Toronto, Ontario M5G 1V2

Direct Line: (416) 597-3371Fax: (416) 597-3370

Email: mckeown@gsnh.com

These comments are general in nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.