Trademark Opposition

Trademark opposition is a crucial, adversarial legal proceeding that occurs after a trademark is accepted by the Registry and published in the Trademark Journal. For four months post-publication, any third party can file a 'Notice of Opposition' to block the registration if they believe the new mark infringes upon their existing rights, lacks distinctiveness, or was filed in bad faith. Whether you need to offensively file an opposition to protect your established market share from a copycat, or defensively counter an opposition filed against your pending application, our elite team of IP litigators provides aggressive, strategic legal representation to secure victory.

The eligibility criteria differ depending on whether you are the Opponent (the one filing the opposition) or the Applicant (the one defending their trademark). **To File an Opposition (Opponent):** The Trade Marks Act is incredibly broad here. Section 21 states that 'any person' can file a Notice of Opposition within four months from the date the trademark is published in the Trademark Journal. You do not strictly need to be a registered trademark owner. Customers, competitors, public interest groups, or foreign entities can oppose a mark if they believe it is generic, descriptive, deceptive, or filed in bad faith. However, the most successful oppositions are filed by individuals or entities who have prior use of an identical or similar mark, thereby establishing superior common law rights (passing off) or statutory rights. **To Defend an Opposition (Applicant):** Eligibility to defend is automatic but strictly conditional upon compliance. Once the Registry serves the Notice of Opposition to the applicant, they are eligible—and legally required—to file a Counter-Statement. This must be filed within precisely two months from the receipt of the notice. If the applicant fails to file the Counter-Statement within this non-extendable window, they lose all eligibility to defend; the application is deemed 'Abandoned' by default, and the opposition is automatically successful. Subsequent stages (filing evidence under Rules 45, 46, and 47) also require strict adherence to the respective two-month timelines to maintain eligibility in the proceedings.