The long-awaited amendments to Canada's Trademarks Act (the "Act") and Trademarks Regulations (the "Regulations") resulting from Canada's Intellectual Property Strategy came into effect on April 1, 2025. These amendments will have a major impact on trademark enforcement, trademark prosecution where Official Marks are cited as obstacles, and trademark opposition proceedings.
The amendments provide new requirements relating to trademark enforcement and a new process to challenge section 9 Official Marks. They also provide the Registrar of Trademarks (the "Registrar") with new powers to award costs, make confidentiality orders, and case manage opposition and section 45 (evidence of use) proceedings.
Canada's Intellectual Property Strategy was launched in 2018 to address stakeholder concerns and resolve gaps in the trademark legislative framework relating to each of those issues. The changes are intended to highlight the importance of use to assert trademark rights in Canada, allow trademark applicants to efficiently overcome objections raised on the basis of Official Marks, and to enable more efficient, cost-effective resolution of Trademarks Opposition Board proceedings and prevent abusive practices.
In order to provide guidance with respect to the changes, the Office of the Registrar of Trademarks has published a Practice Notice relating to requests to challenge a section 9 Official Mark and related extensions of time. In addition, the Trademarks Opposition Board ("TMOB") has published three Practice Notices relating to the opposition practice changes resulting from the amendments. These Practice Notices also came into force on April 1, 2025.
The following summarizes the key changes.
Trademark enforcement
In enforcement proceedings initiated within the first three years after registration, trademark owners will now have to show that their registered trademark has been in use in Canada (or that special circumstances exist that excuse non-use). This amendment is intended to reflect that trademark rights in Canada flow from use and to prevent trademark owners from basing infringement proceedings on marks that are not in use.
Section 9 Official Marks
Official Marks are a type of trademark that are unique to Canada that allow for the protection of trademarks used by Canadian public authorities. They are intended to be associated with public institutions not involved in trade or business and are given a broader scope of protection than regular trademarks, as well as the benefit of existing indefinitely without having to be renewed.
Previously, a party could only use and register a trademark resembling an Official Mark with the consent of the Official Mark owner who had no obligation to provide consent. If consent was withheld, the only other option was to initiate a Federal Court application.
The amendments provide a simple and efficient process for the Registrar, on their own initiative or at the request of a person who pays a prescribed fee, to give public notice that a mark that has been registered as an Official Mark is no longer deemed to be an Official Mark because the mark holder is not a public authority or has ceased to exist. This will allow for faster prosecution of trademark applications faced with objections based on Official Marks and eliminate the need for costly Federal Court proceedings relating to such objections.
Cost awards
Unlike many other jurisdictions, cost awards have not previously been a part of TMOB proceedings. The amendments now allow for the award of costs in a manner that discourages parties from engaging in undesirable behaviours and incentivizes them to efficiently advance proceedings. The TMOB may award costs against a party where specific circumstances are found (as described below), regardless of whether that party is successful or not in the proceeding. Costs will be awarded only in exceptional cases and not to reward a successful party. The Registrar will award costs only at the request of a party and not on the Registrar's own initiative.
In the case of an opposition proceeding, the Registrar may award costs where a decision is issued and:
- if an application for the registration of a trademark is refused on the ground that it was filed in bad faith with respect to one or more of the goods or services;
- if a divisional application is filed on or after the day on which the original application is advertised under subsection 37(1) of the Act and the costs are awarded in respect of the divisional application;
- if a party who filed a request for a hearing withdraws their request less than 14 days before the day on which the hearing is scheduled to take place; or
- if a party engages in unreasonable conduct which causes undue delay or expense in a proceeding.
In the case of a section 45 proceeding, the Registrar will only award costs where a decision is issued and if a party who filed a request for a hearing withdraws their request less than 14 days before the day on which the hearing is scheduled to take place or if a party engages in unreasonable conduct which causes undue delay or expense in a proceeding.
The amendments to the Regulations set the amount of costs as a function of the fees for initiating a proceeding at the time of the Registrar's order, as follows:
- Where a party's application for the registration of a trademark is refused on the ground that it was filed in bad faith with respect to one or more of the goods or services, the costs will be ten times the fee set out in the schedule to the Regulations for filing a statement of opposition;
- Where a party files a divisional application on or after the day on which the original application is advertised under subsection 37(1) of the Act and the costs are awarded in respect of the divisional application, the costs will be two times the fee set out in the schedule to the Regulations for filing a statement of opposition;
- Where a party withdraws a request for a hearing less than 14 days before the day on which the hearing is scheduled to take place, the costs will be two times the fee set out in the schedule to the Regulations for filing a statement of opposition, a statement of objection, or to request that a notice under subsection 45(1) of the Act be given; and
- Where a party engages in unreasonable conduct that causes undue delay or expense, the costs will be five times the fee set out in the schedule to the Regulations for filing a statement of opposition, a statement of objection, or to request that a notice under subsection 45(1) of the Act be given.
Confidentiality orders
The amendments allow TMOB to issue confidentiality orders relating to confidential information filed in evidence in a proceeding and set out the process for making a request to the Registrar that some or all of the evidence be kept confidential. The amendments to the Regulations specify that a request for a confidentiality order must contain:
- a description of the evidence that the party wishes to be kept confidential;
- a statement that the evidence has not been made public;
- the reasons why the evidence should be kept confidential;
- an indication of whether the other party in the proceeding consents to the request; and
- any other information that the Registrar requires in order to make a decision with respect to the request.
The amendments to the Regulations require that in deciding whether to make a confidentiality order, the Registrar must consider the public interest in open and accessible proceedings. The Practice Notice on Confidentiality Orders indicates that the Registrar views confidentiality orders as exceptional because they involve a significant departure from the open court principle. In most proceedings, redaction of documents or describing evidence broadly will be sufficient.
The amendments to the Regulations also specify that at any time in a proceeding where the Registrar has made a confidentiality order, the Registrar may amend the order if the Registrar considers it appropriate in the circumstances, or revoke it if the Registrar is no longer satisfied that the evidence should be kept confidential.
Case management
The amendments set out how the Registrar will exercise case management in proceedings before the TMOB.
First, the Regulations provide that the Registrar may, as the circumstances and considerations of fairness permit, give any direction or make any order to deal with a proceeding in an efficient and cost-effective manner.
Second, in cases where a proceeding requires heightened and ongoing direction, the Registrar may designate the proceeding a case-managed proceeding.
In determining whether to designate a proceeding as a case managed proceeding, the amendments to the Regulations provide that the Registrar must consider all the surrounding circumstances, including:
- the extent of intervention by the Registrar that the proceeding is likely to require for matters to be dealt with in an efficient and cost-effective manner;
- the nature and extent of evidence;
- the complexity of the proceeding;
- whether the parties are represented;
- the number of related files; and
- whether substantial delay has occurred or is anticipated to occur in the conduct of the proceeding.
In relation to a case-managed proceeding, the amendments to the Regulations enable the Registrar to fix the time by which, or the manner in which, any step in a case managed proceeding is to be completed, notwithstanding any time or manner that is provided for in the provisions of the Act or the Regulations. These amendments provide the Registrar with flexibility and allow it to consolidate cases resulting in efficiencies throughout the proceedings.
Conclusion
The amendments that are now in force in Canada advance the Canadian Intellectual Property Office's continuing efforts to increase the efficiency and cost-effectiveness of trademark prosecution and proceedings before the TMOB. Trademark owners should be aware of these new provisions to minimize risk and take advantage of new procedural efficiencies. Trademark owners should also keep in mind the use requirement relating to enforcement of trademark rights within the first three years of registration.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
