Trademark opposition

A buyer of a brand meets opposition when the seller’s trademark application is still pending, or when another party’s application for a similar mark is advertised. Under s. 38(1) of the Trademarks Act, within two months after the advertisement of an application, any person may, on payment of the prescribed fee, file a statement of opposition with the Registrar. The Canadian Intellectual Property Office (CIPO) describes opposition proceedings as adversarial and similar to court proceedings.

What happens next

• CIPO says a person must file either a statement of opposition or a request for more time to oppose within two months of the advertisement.
• If the Registrar considers that the opposition raises a substantial issue for decision, the Registrar forwards a copy to the applicant (s. 38(5)), and the applicant files a counter statement (s. 38(7)).
• Under s. 40, the Registrar shall register the trademark if the application was not opposed and the time for opposing has expired, or was opposed and the opposition was decided in the applicant’s favour; if an appeal is taken, the Registrar acts in accordance with the final judgment.

What to ask

Ask for the application number, whether the application has been advertised, and whether any statement of opposition or request for more time has been filed. See how to search the trademark and IP registers before buying a brand and the trademark assignment entry. Ask a qualified professional how a pending opposition affects a transfer.