Defending Your Brand: A Guide to Trademark Opposition Board Proceedings

Written by Austin Minnings, JD Candidate 2026

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

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.

Endnotes

1. Practice in trademark opposition proceedings, Government of Canada Trademarks Opposition Board, June 17, 2019 at Section II.1.

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. Trademarks Act, RSC 1985, c T-13.

8. Masterpiece Inc v Alavida Lifestyles Inc, 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 Cafe Ltd, 2006 FC 657.

14. Ibid.

15. Neighborly Assetco LLC v Naborly Inc, [2024] TMOB No 5093.