Notable updates to Canada’s Trademarks Regulations (SOR/2018-227) were announced by the Canadian Intellectual Property Office (“CIPO”) and are set to come into effect on April 1, 2025. These updates aim to streamline procedures, reduce potential abuse of trademark processes, and tackle specific challenges within trademark opposition and cancellation proceedings before the Trademarks Opposition Board (“TMOB”).
Key developments include:
Introduction of Cost Awards
The Registrar of Trademarks will now be able to award costs in certain circumstances upon request (not on its own prerogative). Costs awards will apply primarily in response to misconduct, including actions perceived as frivolous or unduly disruptive, for example, filings made in bad faith or last-minute cancellations of scheduled hearings. They will be calculated based on fixed multiples of standard filing fees and are intended primarily as a deterrent rather than to compensate for legal expenses.
Implementation of Confidentiality Orders
There will be a provision for parties to request confidentiality orders to protect sensitive information presented in TMOB proceedings. However, these orders are likely to be rare since requests must clearly demonstrate a compelling need to restrict public access to the information – balancing transparency and privacy concerns. These confidentiality measures will not apply retrospectively.
Case Management Authority
The Registrar will also have the authority to actively manage selected proceedings to promote procedural efficiency and manage costs. This management approach is intended to be applied selectively, especially in cases characterized by complex matters or substantial evidentiary records, giving the Registrar greater flexibility in customizing procedural timelines and requirements.
Brand owners and legal advisors should familiarize themselves with these changes to be strategically prepared for future trademark proceedings. You can access detailed CIPO guidance, including dedicated Practice Notices, here.
For more information about the upcoming trademark changes, or any other intellectual property matters, please reach out to Liz Hatcher at [email protected] or 250.869.1137. Liz practices in the areas of intellectual property and corporate and commercial disputes at Pushor Mitchell LLP in Kelowna and would be more than happy to assist you.
