Defending Your Brand: A Guide to Trademark Opposition Board Proceedings

Written by Austin Minnings
JD Candidate 2026

Introduction
As a business owner or entrepreneur, your brand may be one of your most valuable assets. However, the path to securing a registered trademark can sometimes meet resistance in the form of a Trademark Opposition Proceeding. Whether you are defending your own application or opposing a confusingly similar mark, understanding the procedural rigors and the legal mechanisms behind the Trademark Opposition Board (the “TMOB”) is essential for protecting your intellectual property.
 
The Procedural Roadmap: Statement of Opposition, Evidence and Arguments
The TMOB process is a highly structured sequence of deadlines. Firstly, any person may file a statement of opposition with the Registrar within two months of advertisement of a trademark application on the website of the Canadian Intellectual Property Office.[1] Within two months after a copy of the statement of opposition has been forwarded to the applicant, the applicant shall file and serve a counter statement.[2]
 
Once a counter-statement is served, the evidentiary phase begins. The opponent typically has four months to submit and serve their evidence, which must be provided via affidavit or statutory declaration.[3] Following the Opponent’s filing, the applicant has four months from the effective date of the opponent’s evidence or statement to submit its own evidence.[4] A critical, yet often overlooked, stage is the potential for cross-examination. On application by either party, the Registrar may order the cross-examination of any deponent who provided an affidavit.[5] Only after the reply evidence stage closes does the Registrar invite the parties to submit written representations i.e., the formal legal arguments that frame the case before a final hearing is requested.[6]

Proving Confusion: The “Ordinary Consumer” Standard
A common ground for opposition is confusion under Section 6 of the Trademarks Act[7] (the “Act”). In the landmark case Masterpiece Inc v Alavida Lifestyles Inc[8], the Supreme Court established that the test for confusion is one of first impression. The TMOB does not look at a trademark through the lens of a legal expert. Instead, it adopts the perspective of the "ordinary, casual consumer somewhat in a hurry".[9] Key takeaways for any applicants include:

• Initial Impression Matters: Confusion can exist even if a consumer later realizes their mistake, the legal harm lies in the initial diversion of goodwill.[10]
• Resemblance is Key: While many factors are considered such as the nature of the wares or services, the resemblance between marks is often the most significant factor.[11]
• The Fame Limit: Even a famous mark does not grant a monopoly over all categories. Protection generally only extends to unrelated goods if there is a reasonable connection that supports a likelihood of confusion.[12]
  
  

Establishing Distinctiveness and Bad Faith
To successfully oppose a mark based on a lack of distinctiveness, an opponent must show that their own mark is known in Canada to a "substantial, significant or sufficient" degree.[13] It need not be a household name, but it must be known enough to impact the distinctiveness of an applicant's mark.[14]
 
Furthermore, recent authorities like Neighborly Assetco LLC v Naborly Inc[15] highlight the increasing importance of bad faith claims. Bad faith may be established if an applicant filed for a mark while aware of an opponent's prior rights, specifically to gain an unfair advantage or to obstruct a competitor’s legitimate use. The TMOB will scrutinize the intent of the Applicant and the timing of the filing to determine if a legitimate business purpose existed. As such, navigating a TMOB proceeding requires a precise adherence to timelines and a deep understanding of how confusion, distinctiveness and bad faith are interpreted by the TMOB.

Note: The above information does not constitute legal advice. No guarantees are made as to accuracy, completeness, or applicability to individual situations.​​

[1] Practice in trademark opposition proceedings, Government of Canada Trademarks Opposition Board, June 17, 2019 at Section II.1, online: https://ised-isde.canada.ca/site/canadian-intellectual-property-office/en/trademarks-opposition-board/practice-trademark-opposition-proceedings#Section4.

[2] Ibid at Section II.3.

[3] Ibid at Section IV.1.

[4] Ibid.

[5] Ibid at Section VII.

[6] Ibid at Section VIII.

[7] RSC 1985, c T-13.

[8] 2011 SCC 27.

[9] Ibid.

[10] Ibid.

[11] Mattel Inc v 3894207 Canada Inc, 2006 SCC 22.

[12] Ibid.

[13] Bojangles International LLC and Bojangles Restaurants Inc. v Bojangles Café Ltd, 2006 FC 657.

[14] Ibid.

[15] [2024] TMOB No 5093.