Opposition to a Proposed-Use Application: The Counterstatement, the Evidence and the Coexistence Offer

The step. The Registrar sends the applicant a copy of the statement of opposition, and the applicant must file a counterstatement within the prescribed period (two months after the copy is sent), which on these dates means early September 2025. Diarise from the Registrar's transmittal date, not from the date the opponent filed.

Content. The counterstatement admits or denies each ground, with the applicant's position and any facts it relies on. A bare denial is permitted, but vague or silent responses can be read as admissions, so each ground should be met specifically: denial of confusion under s. 6(5); denial that the opponent's trade name is entitled to protection against these wares; denial of the non-distinctiveness allegation; and a positive assertion, supported by the reseller agreement and launch plan, that the applicant did and does intend to use the mark. No evidence is filed at this stage - evidence comes later by affidavit or statutory declaration, and filing evidence with the counterstatement is a tactical error because it exposes the deponent to cross-examination before the opponent has committed to its case.

Consequences of missing it. The application is deemed abandoned. Reinstatement is available on application with a fee within the prescribed period, and extensions of the counterstatement period can be requested, but neither should be assumed: an extension requires a request before expiry, and reinstatement may be refused or may come too late to protect the commercial launch. Advise the client in writing of the deadline and confirm instructions before it passes.

Evidence stages. The opponent files its evidence first, then the applicant files its evidence, then the opponent may file reply evidence confined to responding to the applicant's evidence. The periods are set by the Regulations (several months for each main round, a shorter reply period) and are extendable on request or by consent. Any affiant may be cross-examined on the affidavit within the prescribed period; a party that files no evidence at its stage puts its case at risk, and the opponent's opposition or the applicant's application can be deemed abandoned at that stage. Written arguments and an oral hearing follow.

Burdens. The applicant bears the legal burden of showing the application complies; the opponent bears only an evidential burden on each ground, and a ground unsupported by evidence fails.

Material dates. For non-entitlement under s. 16(3) on a proposed-use basis, the date is the applicant's filing date, 12 September 2024: the opponent must show prior use or making known of its trade name and mark in Canada and non-abandonment as of that date, which its 2009 use establishes easily. For non-distinctiveness, the date is the filing of the statement of opposition, 30 June 2025. For s. 12(1)(d), the Registrar assesses confusion against the state of the register at the date of the decision, so a registration that is expunged or narrowed in the meantime falls away.

Best target. The 'no intention to use' ground is the weakest - it is really an allegation of non-compliance with the filing requirements, and the signed reseller agreement and launch plan rebut it. The s. 16(3) trade name ground and s. 12(1)(d) both turn on confusion, and both are weakened by the opponent's own record: it has never used LUMEN for software, so a s. 45 request aimed at trimming the class 36 software wares would undercut the register-based ground and sharpen the channels-of-trade argument on the trade name ground.

What the offer buys. The restriction narrows the overlap between the parties' statements of wares, which is the single most persuasive fact on the s. 6(5) confusion analysis, and the consent agreement gives the Registrar a reason not to maintain a confusion objection. Combined, they usually dispose of both the s. 12(1)(d) and s. 16 grounds, because the applicant no longer claims the financial-planning software channel where the opponent's registration lives.

What it costs. An opposition through evidence, cross-examination, written argument and a hearing typically runs into tens of thousands of dollars and two to four years to a decision, with a possible appeal to the Federal Court. A consent-plus-restriction settlement is a fraction of that and removes uncertainty before the 1 November 2025 launch. Registration is the only thing at stake procedurally: the client can use the mark while the application is pending, so the launch itself is not blocked.

Risks to weigh. First, restricting the registration to renewable energy generation asset management may impede later expansion into utility billing, trading or financial analytics - the client should price that in. Second, the client should not accept a bare withdrawal: obtain a covenant not to oppose or challenge the mark, and a standstill on future proceedings. Third, a consent agreement does not bind the Registrar, though restrictions of this kind are normally enough. Fourth, the file remains subject to third-party attack, so search before settling. If the restriction is commercially acceptable, acceptance is the better commercial decision; if the client expects to sell financial analytics software to the same utilities within a few years, fight the s. 16(3) ground on the differences in wares and channels and use the s. 45 route to weaken the register-based ground.