Not a prank – How April 1 changes to trademark proceedings in Canada will impact your IP strategy

Businesses involved with proceedings before the Trademarks Office or enforcement of newly-granted rights in the Federal Court will want to be mindful of the practice changes coming into effect on April 1, 2025. The practice changes are the result of amendments to the Trademarks Act and its accompanying Regulations intended to increase efficiency and cost-effectiveness of proceedings before the Trademark Office in Canada, as well as streamline Federal Court proceedings. The amendments stem from changes to the Budget Implementation Act, 2019, No. 2 as part of Canada’s wider initiative to enhance intellectual property safeguards.

The amendments empower the Registrar of Trademarks (“Registrar”) to grant cost awards, order case management, and issue confidentiality orders in geographical indications objection proceedings under section 11.13, in opposition proceedings in section 38, and in cancellation proceedings for non-use under section 45. The amendments also help with the removal of “official marks” from the Register that have become “deadwood”.

The amendments impact Federal Court proceedings by adding a requirement of proof of use of a registered trademark if asserted in the first three years of registration, in addition to changing the nature of additional evidence permitted upon appeal to the Federal Court.

Cost awards

As a result of these amendments, the Registrar may award costs in fixed amounts in certain exceptional circumstances. The Registrar will not award costs on its own initiatives. A party must request costs and include reasons why they are warranted.

Costs awards are intended to curtail inefficient behaviors and incentivize parties to effectively advance proceedings. They are not intended to prevent a party from fully participating in proceeding or having zealous representation. As these costs are tied to undesirable behaviour, rather than the outcome of the proceeding, the Registrar may award costs against a party, where these specific circumstances are found, regardless of whether that party is successful in the proceeding.

Below is a table indicating circumstances in which the TMOB may award costs (according to the fees set out in the schedule to the Trademark Regulations):

Circumstances in which the Registrar may award costs	Opposition proceeding	Expungement proceeding	Objection proceeding
Application for the registration of a trademark is refused on the ground that it was filed in bad faith.	$10,400	N/A	N/A
A divisional application is filed on or after the day on which the original application is advertised.	$2,080	N/A	N/A
A request for a hearing has been withdrawn less than 14 days before the day on which the hearing is scheduled to take place.	$2,080	$1,110	$2,774
A party engaged in unreasonable conduct which cases undue delay or expense in the proceeding.	$5,200	$2,775	$6,935

The above chart outlines the types of proceedings wherein the TMOB may award costs – namely opposition proceedings pursuant to section 38 of the Trademarks Act, expungement proceedings pursuant to section 45 of the Trademarks Act, and objection proceedings with respect to geographical indications pursuant to section 11.13 of the Trademarks Act.

Costs are tied to the fees for initiating proceedings and vary based on the situation. For example, costs for bad faith refusals can be up to ten times the filing fee, and unreasonable conduct can lead to five times the filing fee.

Confidentiality orders

The amendments allow parties involved in proceedings before the Trademark Office to request an order that will keep certain evidence confidential. Much like confidentiality orders in the Federal Court, the TMOB must consider the public interest in open and accessible proceedings before issuing a confidentiality order.

The amendments specify that a request for a confidentiality order would need to 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.

Pursuant to the amendments, parties can also request an extension of time of one month to file its evidence.

Although the Registrar will take measures to maintain the confidentiality of evidence, on appeal to the Federal Court, a party will still be required to seek a confidentiality order from the Court.

Case management

The amendments allow the Registrar to designate a proceeding as a case-managed proceeding. Further, the amendments allow the Registrar to make an order, or provide a direction, fixing deadlines for steps to be taken in a case-managed proceeding, despite the set times provided for under the Trademarks Act. Case management can be helpful, for example, for aligning multiple related proceedings, ensuring related files are heard together or consecutively, and addressing uncooperative behaviour that could potentially delay ‎a proceeding, as well as other situations.

Overall, these amendments aim to improve the efficiency of trademark proceedings, manage costs effectively, and ensure transparency and fairness in decision making.

Official marks

Official marks are a type of trademark, which allows for the protection of names and designs used by Canadian public authorities for goods and services, such as badges, crests, and emblems. Official marks preclude any person from capitalizing on a well-known, respected public symbol and adopting it their own goods or services.

The amendments allow for the Registrar of Trademarks, on their own initiative or at the request of a person who pays a prescribed fee, to give public notice that a mark, which has been registered as an “official mark”, is no longer deemed an “official mark”. The effect will essentially be eliminating the prohibition prescribed by section 9 of the Trademarks Act.

Filing additional evidence on appeal to the Federal Court  

No longer will parties enjoy the right to file additional evidence on appeal to the Federal Court pursuant to subsection 56(6) of the Trademarks Act. Going forward, leave from the Federal Court will be required to allow a party to file additional evidence when appealing a decision of the Registrar.

Proof of use of newly-registered trademarks in Federal Court enforcement proceedings

The amendments (by way of new subsection 53.2(1.1) of the Trademarks Act) introduce a new obligation for the owner of a registered trademark to show use of its trademark in Canada (or that special circumstances exist that excuse non-use) in enforcement proceedings that are commenced within the first three years after registration. It remains the case, however, that a trademark registration cannot be cancelled for non-use within that same time frame.

This amendment is aimed at preventing enforcement of newly-registered trademarks not in use.

If you have questions on how the amendments may affect your business and specifically the protection of its trademarks, please contact a member of DLA Piper (Canada) LLP’s Intellectual Property & Technology group.