Clare Robinson
Associate
Article
3
Amendments to the Trademarks Act (the “Act”) and the Trademarks Regulations (the “Regulations”) are coming into force on April 1, 2025.
Among other things, these legislative changes are intended to address key stakeholder concerns, provide brand owners with a more efficient and cost-effective resolution of proceedings before the Trademarks Opposition Board (the “TMOB”) and an easier method to overcome official mark objections when applying for trademark registrations.
The most important legislative changes for brand owners to be aware of are as follows:
Prior to April 1, 2025, brand owners who appealed a decision of the TMOB or the Registrar to the Federal Court had the right to file additional evidence on appeal, without any requirement to seek leave. As of April 1, 2025, brand owners will need to obtain leave of the Federal Court to file additional evidence on appeal.
Going forward, this means that brand owners should file their best available evidence before the TMOB or the Registrar, because the Federal Court may not grant leave to file additional evidence on appeal.
At present, Canadian trademark legislation makes no provision for confidentiality orders in proceedings before the TMOB. As of April 1, 2025, brand owners will be entitled to make a request to the Registrar that some or all of the evidence that they submit in the context of a proceeding before the TMOB be kept confidential.
Any request for a confidentiality order must contain:
When considering whether to grant the request, the Registrar must consider the public interest in open and accessible proceedings.
At present, Canadian trademark legislation also makes no provision for costs awards in proceedings before the TMOB. The amendments coming into force on April 1, 2025 will create a framework that awards costs in a manner to discourage and prevent parties from engaging in undesirable behaviour in proceedings before the TMOB, and incentivize them to efficiently advance proceedings.
The Registrar may award costs against a party when the specific circumstances warrant such an award, regardless of which party is successful in the proceeding. The Registrar may only award costs in response to a request by one of the parties, and may not award costs of its own initiative.
Where a proceeding before the TMOB requires heightened and ongoing direction, as of April 1, 2025, the Registrar may designate the proceeding as a case-managed proceeding. When considering whether to designate a proceeding as case-managed, the Registrar must consider all surrounding circumstances, including:
In a case-managed proceeding, the Registrar will be able to fix the time by which or the manner in which any step is to be completed, despite any time or manner that is provided for in the provisions of the Act or the Regulations, and consolidate cases, which should result in efficiencies throughout the proceedings.
Official marks are a type of prohibited mark intended to preclude any person from registering or using a public symbol and adopting the official mark for his or her own goods or services. Objections to trademark applications on the basis of advertised official marks can be raised during examination, as the Act provides that no person may register a trademark consisting of, or so nearly resembling as to be likely to be mistaken for, an official mark.
As of April 1, 2025, the Registrar, on its own initiative or upon receipt of a request, can 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.
This will give brand owners additional tools, in some circumstances, to respond to objections raised in examination on the basis that their trademark application consists of, or so nearly resembles that it is likely to be mistaken for, an official mark.
For more information on how these upcoming amendments to the Canadian trademark legislation will impact your brand, please get in touch with one of our trademark practitioners. We would be happy to assist.
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