There have been two significant developments in recent weeks relating to the process of obtaining and maintaining trademark registrations in Canada. One of them is proposed changes to procedures before the Trademarks Opposition Board where trademark applications can be opposed and registrations can be expunged for non-use. The other is an automated process for classifying the goods and services covered in trademark registrations that were issued before classification was required.
Both of these developments are intended to bring new efficiencies to Canadian trademark practice.
Proposed Amendments to Trademark Regulations
The federal government has published proposed amendments to the regulations under the Trademarks Act that are intended to make proceedings before the Trademarks Opposition Board (the "TMOB") more like proceedings before the Federal Court. Specifically, the amendments would allow the TMOB to: (i) order parties to pay others' legal costs; (ii) issue orders protecting the confidentiality of documents and information produced in the course of proceedings; and (iii) order that certain proceedings be "case managed".
i. Costs
Canadian courts have the power to order one party to a litigation proceeding (usually the losing party) to pay the other party's legal costs. This is one way in which the court system deters certain kinds of conduct like bringing merit-less actions, delaying proceedings, driving up another party's legal costs etc. The proposed amendments would give the TMOB the same power which it currently lacks.
The amount of the costs orders would be fixed depending on the type of proceeding and the conduct at issue. For example, a party who files a trademark application in bad faith might be required to pay a party who successfully opposes the application $10,400 in legal costs. A party to a trademark expungement proceeding who withdraws a request for a hearing less than 14 days before the scheduled hearing date might be required to pay the other party $1,110 in legal costs.
ii. Confidentiality Orders
Currently, the records of all proceedings before the TMOB, including all affidavits and transcripts, are accessible to the public. This often discourages parties from producing relevant but commercially sensitive information before the TMOB and encourages them to wait to produce such evidence on appeal before the Federal Court where the information may be protected by a confidentiality order. The proposed amendments would allow the TMOB to grant confidentiality orders similar to those granted by the Federal Court so that its decisions can be made on a full evidentiary record and be less likely to be appealed.
iii. Case Management
Proceedings before the TMOB are subject to various timelines that are prescribed by the Trademarks Act and its regulations. But not all proceedings are alike when it comes to what steps are required, how much time is needed and so on. Currently, parties seeking to depart from the prescribed timelines for any number of reasons must make special requests in writing that can lengthen proceedings and increase uncertainty and costs. The proposed amendments would allow the TMOB to case manage proceedings much like the Federal Court is able to do. This would minimize delays and costs and set timelines that are tailored to the specific circumstances of each case managed proceeding.
Comments on these proposed amendments can be submitted through the Canada Gazette until July 8, 2024.
Automated Classification for Goods and Services in Registered Trademarks
On June 17, 2019, Canada adopted the Nice Classification System, an international system (named after the city in France where it was conceived) for classifying all goods and services for which a trademark might be registered into 45 different categories. Since then, the Canadian Intellectual Property Office ("CIPO") has required all goods and services identified in Canadian trademark registrations issued prior to June 17, 2019 to be grouped into Nice classes before the registrations can be renewed. This can be a tricky process since it is often unclear which goods and services belong in which classes. In most cases, those goods and services were originally described without any regard to the Nice Classification System.
In recent weeks, CIPO has started sending out letters to owners of pre-June 17, 2019 trademark registrations (and to their agents) that suggest how the goods and services in those registrations should be classified. These letters, which are automated and rely on artificial intelligence, will save registrants and their agents countless hours that they would otherwise have to spend in classifying the goods and services before renewing their registrations. The letters will also avoid the risk that CIPO will disagree with the registrant's conclusions regarding which classes their goods and services belong in and the risk that the renewal deadline will be missed as a result. So long as the registrant accepts the classifications suggested by CIPO (and pays the required per class fees), the renewal will be approved.
Shift Law has extensive expertise and experience in all aspects of Canadian trademark law.
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