The annual conference of the Intellectual Property Institute of Canada in Ottawa featured an insightful session with the Chair of the Canadian Trademarks Opposition Board, Neena Kushwaha.
Process. The Trademarks Opposition Board of the Canadian Intellectual Property Office (CIPO) is responsible for opposition proceedings and Section 45 expungement proceedings. Opposition proceedings take place before the trademark is registered. Section 45 proceedings occur after a trademark has been on the register for three years. A trademark can be removed in whole or in part from the Register if can be proved that the Trademark Owner has not used the trademark for a certain amount of time.
Approximately only 25% of Trademark Oppositions reach decision. Many cases are settled before final decision. Applicants can request an interlocutory ruling to strike some or all of the Statement of Opposition. For Section 45 proceedings, there is currently no procedure to strike the Section 45 Notice. Motions to Strike a Statement of Trademark Opposition are granted in rare circumstances. When a statement of opposition is filed, it is preliminary review by a member for substantive and procedural requirements.
Case Procedure. A series of new authorities was adopted on April 1, 2025. There are several resources available to trademark practitioners and trademark owners that include frequently asked questions and other guidance on the CIPO website. Case management includes procedural management for deadlines and related hearing scheduling. There is also a case management procedure for complex cases where a Board member is much more involved.
Evidence. Hearsay is often a problematic issue where parties rely on witnesses who have no first hand knowledge of the case. Another issue is a lack of specificity in sales and advertising figures or generalized statements that tend to weaken the weight of the evidence, including where the Mark is being used and the trade channels. In addition, evidence on use of marks in foreign markets is not relevant and practitioners should make sure that any evidence submitted in support of its case reflect Canadian uses and sales only. Cross-examination should be focused. Practitioners should be sure that their line of inquiry attacks the primary components of the adversary’s case only. In cross-examination, it is best to know the adversary’s witness’s answer in advance to prevent surprise or testimony that could be damaging to the client’s case.
Use of AI. If AI is being used for evidentiary support, practitioners and clients should be sure to carefully review the submission and that each component is truthful, accurate, and based on sound evidence. The Trademarks Opposition Board has a practice note on AI that is useful to practitioners.
Oral argument. Practitioners are encouraged to focus on a two or three sentence synopsis of the case and keep on reminding the Board of this point through persuasive supporting arguments. Focus on the important claims only and avoid touching on minor issues that tend to dilute the effectiveness of the main argument.
For information on U.S. Trademark Oppositions, please refer to our companion publication, Trademark Opposition Lawyer.