Publication, opposition, and cancellation proceedings
This domain covers contested proceedings: the opposition timeline, the pleading requirements, the burden of proof, and the two cancellation routes.
Opposition
- Advertisement in the Trademarks Journal opens a two-month window to file a statement of opposition with the prescribed fee.
- Grounds must be pleaded under s. 38(2): non-compliance with s. 30, non-registrability under s. 12, non-entitlement under s. 16, non-distinctiveness under s. 2, and bad faith under s. 38(2)(e). Each ground requires the material facts that support it.
- The applicant files a counterstatement; then come the evidence stages (opponent, applicant, reply), cross-examination, written argument, hearing, and decision.
- Burden: the applicant must show the application complies with s. 30; on every other ground the opponent must prove the facts.
Material dates
- Registrability under s. 12(1)(a) to (c): the filing date.
- Entitlement under s. 16: the filing date, or the date of first use where relevant.
- Non-distinctiveness: generally the date the statement of opposition is filed.
Cancellation
- Section 45: summary procedure before the Registrar, available to any person after three years from registration; the owner must show use in Canada during the three years preceding the notice, for each good and service, or establish special circumstances.
- Section 57: Federal Court action by any interested person, relying on invalidity grounds under s. 18.
Worked example
The opponent has sold in Canada since 2018; the applicant filed in 2022. The opponent pleads s. 16(1)(a) and evidences first and continuous use. The applicant cannot rely on its own later date; it must attack the opponent's evidence - showing the use was not in the normal course of trade, or was abandoned before the filing date. The s. 17(2) five-year bar is not yet available because the registration is recent.
Traps that cost marks
- Pleading a ground without material facts, which draws a strike.
- Missing the counterstatement deadline.
- Confusing the onus rules between s. 30 and other grounds.
- Using s. 45 to argue confusion - it is a use proceeding only.