If the Canadian Intellectual Property Office (CIPO) issues a Section 37 confusion objection, it means the examiner believes your trademark is too similar to an existing one. You have a strict 6-month deadline to respond. You must use specific legal arguments under Section 6(5) of the Trademarks Act to prove consumers will not be confused.
Receiving an Examiner’s Report from the Canadian Intellectual Property Office (CIPO) can be incredibly stressful, especially when it includes a Section 37 objection. This specific objection states that your proposed brand is “confusingly similar” to a trademark that is already registered or pending in Canada.
However, an objection is not a final refusal. It is simply the government’s initial assessment. Many trademarks in Canada successfully overcome this hurdle through well-crafted legal arguments. Because this process involves complex legal precedents, connecting with a specialized law firm from our directory is critical to saving your brand. 📍
Step-by-Step Process in Canada
A Section 37 objection is a federal issue, meaning the rules apply equally whether your business is based in Winnipeg, Ottawa, or Victoria. To beat the objection, your trademark agent or lawyer must directly challenge the examiner’s logic using the Test for Confusion.
Step 1: Review the Examiner’s Report Carefully
When CIPO sends the report, it will explicitly list the cited trademark(s) blocking your application. You and your lawyer need to analyze the cited mark. Look at their filing date, their registered goods and services, and whether they are actually actively using the mark in the Canadian marketplace. 🔍
Often, examiners make broad assumptions. For example, they might claim that because you sell “software” and the cited mark sells “software,” there is confusion. However, if your software is for farm management and theirs is for dental clinics, you have a strong argument.
Step 2: Analyze Section 6(5) Factors
Under Section 6(5) of the Canadian Trademarks Act, you must argue why the marks can co-exist. Your lawyer will draft a response addressing the five mandatory factors: inherent distinctiveness, length of time the marks have been in use, nature of the goods/services, nature of the trade, and degree of resemblance in appearance, sound, or idea. 📚
Your goal is to point out the differences. If your logos look completely different, or if your target consumers are highly specialized professionals rather than the general public, your lawyer will highlight this to prove that a reasonable Canadian consumer would not be confused.
Step 3: Submit the Written Legal Argument
You have six months from the date of the Examiner’s Report to submit your formal response. This is not a simple letter; it is a structured legal argument citing past Federal Court cases and Trademarks Opposition Board decisions. 💻
Your lawyer will upload this response directly to CIPO. If the examiner is convinced by your arguments, they will withdraw the Section 37 objection and allow your trademark to proceed to publication.
Step 4: Consider a Co-Existence Agreement (Consent)
If the legal arguments are not enough, there is another strategy. In Canada, CIPO often gives weight to a “Consent Agreement.” This is a legal contract where the owner of the cited trademark formally agrees that your mark will not cause confusion with theirs. 💬
Your lawyer can contact the owner of the blocking trademark to negotiate this. Often, if you agree to limit your services geographically or to a very specific niche, the other party will sign the consent, and CIPO will usually accept it.
How Much Does it Cost in Canada?
Responding to a Section 37 objection is a highly specialized legal task. There are no additional government fees to file your response, but professional legal fees will apply. As of May 2026, here is what you can expect: 💰
| Service / Item | Estimated Cost (CAD) | Details |
|---|---|---|
| CIPO Response Fee | Free ($0) | CIPO does not charge you to submit your response. |
| Lawyer Initial Assessment | $250 – $500 | Reviewing the report to tell you if the objection is beatable. |
| Lawyer Drafting the Response | $1,000 – $3,000 | Extensive legal drafting, case research, and submission. |
| Negotiating Consent | $800 – $2,500 | Contacting the other party to draft a co-existence agreement. |
While the costs can be significant, abandoning the trademark means losing your brand name and all the money you have already invested in marketing.
How Long Does the Process Take?
You have a strict 6-month deadline to respond to the Examiner’s Report. If you miss this deadline without applying for an extension, CIPO will formally abandon your trademark application. ⏱️
Once your lawyer submits the response, it currently takes CIPO examiners anywhere from 2 to 6 months to review your arguments. If they accept them, your application immediately moves forward. If they reject them, they will issue a subsequent report, and you will have another chance to argue or appeal.
Frequently Asked Questions (FAQ)
What happens if I just ignore the Examiner’s Report?
If you fail to respond to the Section 37 objection within the 6-month deadline, CIPO will automatically consider your application “abandoned.” Your file will be closed, you will lose your filing fees, and you will not have any trademark protection.
Can I just call the examiner and explain it to them?
While trademark agents sometimes call examiners for minor technical clarifications, a Section 37 confusion objection is a serious legal matter. It cannot be resolved over a simple phone call. It strictly requires a formal, written legal argument submitted through the CIPO portal.
What is a co-existence agreement?
A co-existence agreement (or consent agreement) is a legal contract between you and the owner of the conflicting trademark. It explicitly outlines how both brands can operate in the Canadian market simultaneously without confusing the public. CIPO heavily relies on these documents to withdraw objections.
Will changing my logo fix the confusion objection?
Generally, no. Once a trademark application is filed, CIPO does not allow you to make material alterations to the mark itself. If your objection is based on the words being too similar, adding or changing a logo will usually require you to file a brand new application and pay new fees.
Leave a Reply