Key Changes to the Canadian Trademarks Act and Regulations
As of April 1, 2025, amendments to the Canadian Trademarks Act and Trademarks Regulations have come into force, implementing changes to the practice of the Trademarks Opposition Board (TMOB), as well as other notable changes for trademark applicants and owners. Here is a summary of the key amendments.
TMOB Proceedings
Authority to Award Costs
The TMOB now has the power to award costs in trademark proceedings. This regime allows the Registrar of Trademarks, at the request of a party, to award costs against another party that engages in conduct causing undue delay or expense. This approach is designed to discourage behaviors that obstruct efficient proceedings rather than to merely compensate the winning party for legal costs, as done in the federal and superior courts.
Costs may be awarded in exceptional circumstances, which include:
- Filing a trademark application in bad faith;
- Filing (multiple) divisional applications after the original application is advertised;
- Withdrawing a hearing request less than 14 days before the scheduled hearing date; and
- Engaging in unreasonable conduct that causes undue delay or expense.
The amendments set out the amount of costs as a function of the fees for initiating a proceeding. For example, if a party’s application is found to have been filed in bad faith, the cost award is an amount that is ten times the fee for filing a statement of opposition.
Issuance of Confidentiality Orders
Before April 1, 2025, the TMOB could not prevent the disclosure of commercially sensitive or personal information, as the Trademarks Act required all documents to be made publicly available. This may have led to parties withholding relevant evidence that included confidential information during TMOB proceedings, opting to introduce it later under seal at the Federal Court.
The amendments provide a process for parties to request confidentiality orders, allowing sensitive information to be protected from public disclosure during TMOB proceedings. This aligns with practices in the Federal Court and Federal Court of Appeal, where confidentiality orders are granted based on the true confidential nature of the evidence and the potential harm from its disclosure.
A request for a confidentiality order must include:
- A description of the evidence a party wishes to be kept confidential;
- A statement confirming that the evidence has not been made public;
- An explanation of why the evidence should remain confidential;
- An indication of whether the other party consents to the request; and
- Any additional information required by the Registrar to make a decision regarding the request.
In deciding whether to make a confidentiality order, the Registrar must consider the public interest in open and accessible proceedings.
At any time during the proceeding, the Registrar can amend or revoke the confidentiality order if it considers it appropriate in the circumstances, or if the Registrar is no longer satisfied that the evidence should be kept confidential.
Case Management Authority
The amendments grant the Registrar broad authority to manage cases actively, by allowing the Registrar to give any direction or make any order to deal with matters in a case, aiming to enhance the efficiency and cost-effectiveness of trademark proceedings.
Further, the Registrar is able to designate a proceeding as a case-managed proceeding if ongoing direction is required. In case-managed proceedings, the Registrar is permitted to consolidate similar cases and set timelines.
These amendments aim to reduce delays, enhance procedural efficiency, and ensure trademark disputes are resolved promptly and fairly.
Federal Court Proceedings
Requirement to Show Use in Enforcement Proceedings
Trademark owners who seek to enforce their registered trademark rights before the Federal Court within 3 years of registering their trademark must show that they have used their mark during that period or otherwise demonstrate special circumstances excusing non-use of the mark in Canada during that period.
This requirement ensures that trademark owners are in fact using their marks before they are able to rely on their registrations to prevent other parties from using the same or similar marks in Canada.
Additional Evidence on Appeal
Prior to the amendments, additional evidence could be filed with the Federal Court in an appeal from a TMOB decision as of right. Now, the Federal Court must grant leave in order to file additional evidence on appeal.
Official Marks
New Public Notice Mechanism
Official marks are intended to prevent the misuse of public symbols. However, prior to the amendments, these marks could be indefinitely protected, even if the entity holding the mark ceased to exist or was no longer a public authority. The amendments have introduced a new mechanism allowing the Registrar to give public notice that an official mark is no longer protected in such circumstances. This can be done by the Registrar on their own initiative or at the request of any person, upon payment of a prescribed fee.
This new mechanism is particularly important for trademark owners who may face objections based on defunct official marks. The ability to challenge such marks without resorting to Federal Court proceedings should save time and resources. It should also help remove outdated official marks from the register, facilitating the registration of new trademarks and promoting a more dynamic marketplace.
Commentary
The amendments to the Trademarks Act and Trademarks Regulations address some of the gaps in the previous legislative framework. The changes to the TMOB may discourage undesirable behaviors and allow the TMOB to handle cases more efficiently, benefiting trademark applicants and owners, and all parties involved in proceedings before the TMOB. Further, the new public notice mechanism will allow trademark applicants to challenge official marks, where the holder of the official mark is not a public authority or no longer exists.
If you have any questions about trademark proceedings before the TMOB or how these amendments may impact you, please contact Sebastian Beck-Watt or Ashley Chu at info@pckip.com.
PCK IP is a leading North American intellectual property firm based in Canada, specializing in the preparation, prosecution, and strategic management of patent and trademark portfolios for global markets. Our team of seasoned patent agents, engineers, scientists, and IP lawyers supports clients across diverse technologies, with expertise in coordinating cross-border IP strategies. Contact us today to explore how we can help secure and manage your intellectual property.
The contents of this article are provided for general information purposes only and do not constitute legal or other professional advice of any kind.