How many opposition cases has CIPO dealt with over the years? The answer depends on the way in which you count oppositions and also depends on what qualifies as an “opposition”.
I’ll start with a simple example. If you open CIPO’s online trademark database record for
application no. 2111060 and scroll through the Action History (i.e. the prosecution event record) you’ll see an “Opposed” event dated 2020-02-10. If you scroll past the Action History you’ll come to the Opposition History which provides a record of each opposition event throughout each stage of the opposition proceeding.
So, you could go through
1 every trademark record
2 looking for Action History “Opposed” events and increment a counter every time you find such an event. If you apply that technique to CIPO’s data as of 28-Jun-2021 you will find a total of 47,143 “Opposed” events. Based on that you might conclude that CIPO has handled 47,143 opposition cases over the years. However, that’s wrong.
To understand the problem, open CIPO’s online trademark database record for
application no. 1918296 and scroll through the Action History. You’ll see an “Opposed” event dated 2021-05-25. If you scroll past the Action History to the Opposition History, you will discover not one but two separate opposition proceedings (labelled “Case # 1” and “Case # 2”) involving application no. 1918296. Notice that there is only one “Opposed” event in the Action History, even though there are two separate opposition proceedings. You might think that’s because the Statements of Opposition in each proceeding were filed on the same day (2021-05-25) as shown in the Opposition History. But, no—an opposed application’s Action History will ordinarily contain only one “Opposed” event, regardless of the number of opposition proceedings commenced in relation to that application
3. For example, the Action History for
application no. 1540778 exhibits only one “Opposed” event (dated 2012-08-07), but that application's Opposition History reveals four separate opposition proceedings with one Statement of Opposition filed on 2012-06-13 and three others filed on 2012-09-11
4.
So, the foregoing technique only tells us that as of 28-Jun-2021 a total of 47,143 applications had been opposed. It doesn’t tell us how many oppositions CIPO has dealt with because some applications attract more than one opponent.
To get a more accurate opposition case count we could go through every trademark record having an Opposition History, count the number of separate opposition proceedings reflected in each Opposition History and total the result
5. For example, the Opposition Histories of the aforementioned application nos. 2111060, 1918296 and 1540778 reveal 1 + 2 + 4 = 7 opposition proceedings. If you apply that technique to CIPO’s data as of 28-Jun-2021 you will find a total of 52,842 separate opposition proceedings. But is that the correct result?
The answer to that last question depends on what qualifies as an “opposition”. To understand the issue, open CIPO’s online trademark database record for
application no. 1151368 and scroll through the Opposition History. Notice that there are six separate opposition proceedings, i.e. Case #1, Case #2, Case #3, Case #4, Case #5 & Case #6 (but only one Action History “Opposed” event). However, a Statement of Opposition was filed in only one of those six proceedings, namely Case #1. Should the other five proceedings be counted if no Statement of Opposition was filed in any of them? If you take the view that the answer is “Yes—because CIPO is counting them” then you can conclude that as of 28-Jun-2021 CIPO has handled 52,842 separate opposition proceedings.
But what if you take the view that a proceeding only qualifies as an “opposition” if a Statement of Opposition is filed? In that case you have to do some more work. Specifically, you need to go through each opposition proceeding for every trademark record having an Opposition History, and count the number of proceedings having an “S/O Filed” action
6. If you apply that technique to CIPO’s data as of 28-Jun-2021 you will find 31,208 separate opposition proceedings in which a Statement of Opposition was filed
7.
You might even want to take a stricter view, e.g. that a proceeding only qualifies as an “opposition” if the Registrar issues a decision on the merits. CIPO’s richly detailed trademark .xml data facilitates such queries: you can search for any of 4 different opposition proceeding “decision” events, as particularized in CIPO's Trademarks Data Dictionary:
- Decision - Opposition Rejected (A final decision issued by the Registrar to reject the opponent’s opposition to the trademark application.)
- Decision - Application Refused (A final decision issued by the Registrar to refuse the applicant’s application for registration.)
- Decision - Split Decision (A final decision issued by the Registrar to refuse some goods and/or services but to reject the opponent’s opposition for the remaining goods and/or services.)
- Decision Transmitted to Parties (The final decision on the opposition case is forwarded to both the applicant and the opponent.)
As of 28-Jun-2021 there have been 3,698 separate opposition proceedings in which the Registrar issued a decision on the merits
8. More particularly, the opposition was rejected in 1,593 cases; the application was refused in 1,768 cases; and a split decision was reached in 337 cases.
You might wonder “How many applications have involved more than one opposition proceeding?” The answer again depends on what qualifies as an “opposition”. If you take the view that every Case # listed in an application’s Opposition History should be counted regardless of whether a Statement of Opposition was filed, then the answer—as of 28-Jun-2021—is 3,577 applications have involved more than one opposition proceeding. If you restrict the count to proceedings in which a Statement of Opposition was filed then the answer is 1,385. If you further restrict the count to proceedings in which the Registrar issued a decision on the merits then the answer is 61.
You might also wonder “What is the greatest number of opposition proceedings involving a single application?” The answer—as of 28-Jun-2021—is 11, if you count proceedings regardless of whether a Statement of Opposition was filed (see applications
613417,
794529,
794531,
1064973 &
1064974). If you count only proceedings in which a Statement of Opposition was filed then the answer is 9 (see applications
613417,
1064973 &
1064974). If you count only proceedings in which the Registrar issued a decision on the merits then the answer is 4 (see applications
383316 &
795511).
The foregoing pertains to both active and inactive opposition proceedings extending back to 1993, plus a very few pre-1993 cases (CIPO’s pre-1993 opposition data is incomplete). In a future post I will provide some metrics regarding CIPO’s currently active opposition proceedings
1 By “go through” I am referring to the execution of appropriate SQL queries against a data warehouse constructed using CIPO’s trademark .xml data, as mentioned elsewhere in this blog.↩
2 “every trademark record” means the 1,797,168 trademark records detailed in CIPO’s online trademark database and trademark .xml data files as of 28-Jun-2021.
↩
3 There are exceptions. If an application is withdrawn from advertisement and re-advertised you may find two “Opposed” events, one pertaining to each of the two advertisements—see for example application nos. 1885196, 1870610 & 1777005. You may also find two “Opposed” events if an application’s allowance/registration events are found to have been made in error; upon removal of such errors the application may immediately encounter a second opposition—see for example application no. 1803879. In other cases a second “Opposed” event may have been entered in error then promptly removed—see for example application nos. 1882349, 1604145 & 1637788. Conversely, there are cases in which a first “Opposed” event has been removed in error, with a second “Opposed” event being entered to correct the error—see for example application no. 1770123. As of 28-Jun-2021, 679 applications exhibit multiple “Opposed” events for reasons such as these. 20 of those applications each have 3 “Opposed” events; the other 659 each have 2 such events.↩
4 Notice that the '778 application’s Action History includes a “Proposed Opposition” event dated 2012-05-09. CIPO did not record the 2012-08-07 “Opposed” event until after the first Statement of Opposition was filed on 2012-06-13.↩
5 Again by executing an appropriate SQL query.↩
6 This again entails execution of an appropriate SQL query against the data warehouse.↩
7 As of 28-Jun-2021 CIPO’s trademark .xml data contains 31,510 “S/O Filed” events, but in some cases 2 or 3 such events occur in a single opposition proceeding. For example, each of applications 1113607, 1254713 & 1604978 have 3 such such events in a single opposition proceeding. I have taken this into account in order to avoid double or triple counting opposition proceedings having multiple “S/O Filed” events.↩
8 As of 28-Jun-2021 CIPO’s trademark .xml data contains 3,854 opposition “decision” events, but in some cases 2 or 3 such events occur in a single opposition proceeding. For example, each of applications 896710 & 1504296 have 3 such such events in a single opposition proceeding. I have taken this into account in order to avoid double or triple counting opposition proceedings having multiple “decision” events.↩
