Active Opposition Proceedings

1,461 Canadian trademark opposition proceedings are ongoing as of 08-Nov-2021, according to CIPO’s trademark .xml data.

41 oppositions pertain to Madrid protocol applications; the remaining 1,420 to non-Madrid cases.

The current status of the 1,461 oppositions breaks down as follows:

Opposition Cases	Current Status	Status Description
792	Active	Statement of opposition has been filed and served on trademark applicant.
496	Pending	No statement of opposition has been filed.
98	Awaiting Decision	Finished all stages; awaiting Registrar’s final decision.
44	Appeal In Progress	One of the parties has filed an appeal of the final decision in the Federal Court of Canada.
31	Decided, Pending Appeal	Registrar’s final decision has issued and is in the period for which either party can file an appeal with the Federal Court. of Canada
1,461

496 (34%) of the proceedings are “Pending”, meaning that a Statement of Opposition has not yet been filed.  These are typically cases in which a prospective opponent attempts to negotiate a settlement, e.g. by having the applicant amend the application’s goods / services description to avoid perceived marketplace confusion.  26 of the 41 oppositions to Madrid protocol applications are “Pending”; the remaining 15 are “Active”.

Excluding the pending cases, 965 opposition proceedings are actively ongoing.  [See Counting Opposition Cases for a discussion of what qualifies as an “opposition”.]

A fully contested opposition proceeding progresses through multiple stages, as set forth in Appendix H “CIPO Opposition Stages” of CIPO’s Trademarks Data Dictionary—WIPO standard XML ST.96, Version 2.2.  Appendix H lists 18 stages, but CIPO may create new stages to accommodate procedural changes.  Indeed, CIPO’s trademark .xml data currently encompasses 20 different stages¹.  The following table groups the currently ongoing 1,461 oppositions by their current stages, within each of the previously tabulated status groupings:

Opposition Cases	Current Status	Current Stage	Stage Description
163	Active	Evidence - Opponent	All actions pertaining to the opponent’s evidence prior to the applicant’s evidence being filed.
155	Active	Counter Statement	All actions pertaining to the counter statement prior to the opponent's evidence being filed.
100	Active	Oral Hearing	All actions pertaining to the scheduling and conducting of an oral hearing.
88	Active	Evidence - Applicant	All actions pertaining to the applicant’s evidence prior to the opponent’s reply evidence being filed.
49	Active	Statement of Opposition	All actions pertaining to the statement of opposition prior to the counter statement being filed.
42	Active	Cross Examination by Opponent	All actions pertaining to a request received from the opponent and the issuance of an order to cross-examine evidence filed by the applicant.
42	Active	Reply Evidence	All actions pertaining to the opponent’s reply evidence prior to the written arguments being requested.
40	Active	Written Arguments - Opponent	All actions pertaining to the written arguments up to, and including, the exchange of written arguments.
39	Active	Cross Examination by Applicant	All actions pertaining to a request received from the applicant and the issuance of an order to cross-examine evidence filed by the opponent.
27	Active	Written Arguments - Applicant	All actions pertaining to the written arguments up to, and including, the exchange of written arguments.
14	Active	General Actions - Opposition	General actions for an opposition case.
13	Active	Amended Application	All actions pertaining to a request received to amend an application.
12	Active	Amended Statement of Opposition	All actions pertaining to a request to amend a statement of opposition.
3	Active	Leave Evidence - Applicant	All actions pertaining to a request received from the applicant for leave to file further evidence.
2	Active	Appeal	All actions pertaining to the appeal of a final decision issued by the Registrar.
2	Active	Interlocutory Motion	All actions relating to the sufficiency of allegations contained in the statement of opposition.
1	Active	Leave Evidence - Opponent	All actions pertaining to a request received from the opponent for leave to file further evidence.
44	Appeal In Progress	Appeal	All actions pertaining to the appeal of a final decision issued by the Registrar.
82	Awaiting Decision	Oral Hearing	All actions pertaining to the scheduling and conducting of an oral hearing.
14	Awaiting Decision	Decision	All actions pertaining to the issuance of the final decision of the Registrar.
1	Awaiting Decision	Leave Evidence - Applicant	All actions pertaining to a request received from the applicant for leave to file further evidence.
1	Awaiting Decision	Written Arguments - Opponent	All actions pertaining to the written arguments up to, and including, the exchange of written arguments.
31	Decided, Pending Appeal	Decision	All actions pertaining to the issuance of the final decision of the Registrar.
449	Pending	Statement of Opposition	All actions pertaining to the statement of opposition prior to the counter statement being filed.
43	Pending	Amended Application	All actions pertaining to a request received to amend an application.
4	Pending	General Actions - Opposition	General actions for an opposition case.
1,461

Data Dictionary Appendix I “CIPO Opposition and Expungement Actions” lists 178 actions applicable to opposition or cancellation (i.e. expungement) proceedings, e.g. “S/O Fee Received”, “S/O Sent To Applicant”, “Cross Examination Undertakings Filed by Opponent - Rule 42”, etc. etc.  CIPO also creates new actions to accommodate procedural changes, some of which are necessitated by statutory or regulatory amendments.  As of 08-Nov-2021, CIPO’s trademark .xml data references 58 opposition or cancellation actions that are not listed in Appendix I of the most recent version of the Data Dictionary, i.e. version 2.2 dated 22-May-2019.

Have a question about Canadian trademarks that might be answerable by reference to CIPO’s data?  Send me an email—I’ll try to look into it and let you know (subject to these Terms & Conditions).

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1 The 2 additional stages not included in Appendix H of CIPO’s Trademarks Data Dictionary—WIPO standard XML ST.96, Version 2.2 are “Written Arguments - Opponent” and “Written Arguments - Applicant” which appear to have replaced the “Written Arguments” stage listed in Appendix H in version 2.2 of the Data Dictionary.^↩