The Canadian Government has published long-awaited proposed amendments to Canada’s Trademarks Regulations (the “Regulations”). In a recent public consultation, the Canadian Intellectual Property Office (“CIPO”) sought feedback on the proposed amendments to the Regulations.
The proposed changes are published in the Canada Gazette, Part I. They are meant to help put into effect the legislative amendments made to the Trademarks Act by the Budget Implementation Act, 2018, No. 2. While those amendments received royal assent in December 2018, they have not yet taken effect because the Regulations have not contained the necessary provisions to support their implementation. The proposed amendments to the Regulations are not yet law and remain subject to further revisions.
The proposed amendments are targeted at improving the efficiency and cost-effectiveness of Trademarks Opposition Board (“TMOB”) proceedings and allowing for a new way to challenge official marks.
The key changes are as follows:
1. Cost Awards in Opposition Proceedings
Unlike what is done in trademark proceedings before the Federal Court, the TMOB has not had the authority to award costs against a party to a proceeding to curtail inefficient behaviour that increases the cost of proceedings and hinders the timeliness of a resolution.
The proposed amendments put in place a regime that would award costs in a manner designed to discourage and prevent undesirable behaviours in proceedings and to incentivize parties to efficiently advance proceedings.
The proposed circumstances in which the Registrar may, at the request of a party, award costs in a trademark opposition proceeding include:
- 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;
- 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. A list of sample behaviours that could attract costs is expected to be set out in a practice notice.
In an expungement proceeding, the Registrar would only award costs 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 proposed amendments would prescribe fixed cost awards based on the fees for initiating a proceeding.
This change is intended to discourage undesirable behaviours during TMOB proceedings. Cost awards would not be permitted if a proceeding ends before a decision is issued. A general policy of awarding costs to the winning party has not been adopted.
2. Case Management
The TMOB currently does not have express authority to give a direction or make an order to enhance the efficiency and cost-effectiveness of a proceeding. For example, the TMOB currently lacks the ability to consolidate cases concerning very similar trademarks involving the same parties or to abbreviate timelines.
The proposed Regulations clarify how case management may be used in proceedings. First, the proposed Regulations provide that the Registrar may give any direction or make any order to deal with matters in a proceeding in an efficient and cost-effective manner as the circumstances and considerations of fairness permit.
Second, in cases where a specific proceeding requires a heightened and ongoing direction, the Registrar would be able to designate the proceeding as a “case-managed proceeding,” subject to any terms that the Registrar considers appropriate.
In determining whether to designate a proceeding as a case-managed proceeding, the proposed amendments provide that the Registrar 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.
Case management will serve to manage the procedures, schedules and timetables of a proceeding prior to a decision, minimizing delays and costs. These capabilities are crucial for the TMOB to ensure the efficient and cost-effective resolution of cases.
3. Confidentiality Orders
The TMOB cannot currently prevent the disclosure of commercially sensitive or personal information submitted to the Registrar as documents disclosed in proceedings before the Registrar are publicly accessible, aligning with the open courts principle. This circumstance can lead to parties filing minimal or incomplete evidence before the TMOB with the goal of introducing additional evidence, if necessary, when appealing the Registrar’s decision to the Federal Court. Federal Court procedure allows for confidential evidence to be filed confidentially.
The proposed amendments would set out how a party to a proceeding before the TMOB would be able to request an order that certain evidence be kept confidential. The proposed 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.
The proposed amendments encourage the provision of a full record of evidence before the Registrar and provide that, in deciding whether to make a confidentiality order, the Registrar consider the public interest in open and accessible proceedings.
4. Official Marks
Official marks are unique to Canada and are a type of prohibited mark intended to preclude any person from capitalizing on a well-known, respected public symbol and adopting it for their own goods or services. Prohibited marks are associated with public institutions not involved in trade or business. For an entity to claim the benefit of an official mark, the entity must be a public authority in Canada. Official marks provide broader protection than a regular trademark and are not subject to renewal so they are on the register indefinitely. As no person can register a trademark consisting of, or so nearly resembling as to be likely mistaken for, an official mark, objections to trademark applications on the basis of official marks are commonly raised.
The proposed amendments will create a simple and efficient mechanism to allow the Registrar to, on its own initiative or upon receipt of a request and payment of a prescribed fee from any person, give public notice that the prohibition to adopt or use a particular official mark no longer applies in circumstances where the mark holder is not a public authority or has ceased to exist. Currently this requires the initiation of a proceeding in Federal Court.
The consultation regarding the proposed amended Regulations was open from June 8, 2024 to July 8, 2024. Submitted comments will be posted in the Canada Gazette, Part I following review by CIPO. No date has yet been set for the amendments to come into force but CIPO has advised that they will provide practice notices to assist with the transition.
We will continue to monitor the progress of these amendments and will provide updates as they occur. Should you have any questions regarding trademarks or official marks, please do not hesitate to reach out to a member of Miller Thomson’s Intellectual Property team.
