Trademarks Shake-up: Making Sense of Recent Changes to Trademarks Practice

A brief overview of the effects of the amendments are set out below:

	Before April 1, 2025	After April 1, 2025
Cost awards in Board proceedings	Not available	Available in defined circumstances, for fixed amounts
Confidentiality orders in Board proceedings	Not available	Available in exceptional circumstances
Case management in Board proceedings	Not available	Available in exceptional circumstances
Filing new evidence in appeals of decisions of the Board before the Federal Court (s. 56 of the Act)	Available as of right	Leave is required
Trademark enforcement proceedings before the Federal Court	No requirement to demonstrate use of the asserted registered trademark	Parties alleging infringement or depreciation of goodwill (ss. 19, 20 or 22 of the Act) within the first three years of registration must show post-registration use of the mark
Procedure for challenging validity of official marks	Parties must apply to the Federal Court to challenge the validity of official marks	Upon payment of a fee, anyone can request the Registrar investigate whether the official mark is invalid because the entity that requested public notice be given is not a public authority or no longer exists (s. 9(3)-(4) of the Act)

Changes to Proceedings before the Trademarks Opposition Board

The Trademarks Act permits any person to commence proceedings challenging geographical indications or translations, trademark applications or trademark registrations, under sections 11.13, 38 and 45, respectively. For rightsholders, these proceedings not only threaten their intellectual property rights, but they can also be costly, time-consuming, and previously did not offer adequate protection for confidential information.

On April 1, 2025, new amendments to the Trademarks Act and Regulations came into force. These amendments conferred upon the Registrar of Trademarks the ability to award costs to successful parties, to order that certain information be kept confidential, and to case-manage proceedings, in exceptional circumstances. These new rules are intended to discourage bad behaviour and potentially incentivize parties to prepare more fulsome evidence in Board proceedings.

Additionally the Board has issued new Practice Notices providing further guidance on how it intends to apply the new rules.

Costs awards

Unlike court proceedings where costs are awarded as a matter of course, prior to the amendments cost awards were not available in proceedings before the Board.

Parties in objection, opposition, or section 45 cancellation proceedings may now request that the Registrar order costs where one of the following grounds are present (bad faith, late divisional, late cancellation of hearing, and unreasonable conduct). In such cases, the Registrar may not deviate from the prescribed amounts set out below.

Ground	Quantum (current based on 2025 filing fees)
	Objection Proceedings (s. 11.13 of the Act)	Opposition Proceedings (s. 38 of the Act)	Cancellation Proceedings (s. 45 of the Act)
The trademark application is refused on the ground of bad faith	N/A	$10,857.60 (10 times the fee for filing a statement of opposition)	N/A
A divisional application1 CIPO has clarified that the Registrar will generally only award costs under this ground in cases where multiple divisional applications were filed on or after the date of advertisement of the original application is filed on or after the date the original application is advertised	N/A	$2,171.52 (2 times the fee for filing a statement of opposition)	N/A
The party who has requested a hearing cancels their request less than 14 days before the hearing	$2,896.06 (2 times the fee for filing a statement of objection under subsection 11.13(1) of the Act)		$7,532.46 (13 times the fee for a request that a notice be given under subsection 45(1) of the Act)
A party delays or increases costs due to “unreasonable conduct”	$7,240.15 (5 times the fee for filing a statement of objection under subsection 11.13(1) of the Act)	$5,428.80 (5 times the fee for filing a statement of opposition)

These regulations are intended to, on the one hand, discourage undesirable or abusive conduct by parties, and on the other hand, avoid complicating proceedings by limiting the circumstances in which costs will be warranted and not providing for discretion in terms of quantum. However, we expect that the “unnecessary conduct” ground is likely to be frequently raised by parties given its broad and open-ended language and the potential for costs recovery.

The Board’s Practice Notice on Costs Awards provides examples of conduct that may be regarded as unreasonable conduct causing undue delay or expense:

1. Failing to attend a hearing that a party has requested without informing the Board;
2. Failing to attend a cross-examination that a party has requested without informing the other party or cancelling a cross-examination on short notice without consent;
3. Failing to follow a case management order or direction;
4. Breaching a confidentiality order;
5. Lack of co-operation with the other party for scheduling of cross-examination;
6. A course of conduct necessitating unnecessary adjournments or delays;
7. Pursuing a ground of opposition that has no reasonable chance of success; (this is intended to discourage parties from pursuing a “kitchen sink” strategy in an opposition whereby all or nearly all possible grounds of opposition are asserted irrespective of their chance of success)
8. Acting disrespectfully or maligning the character of another party.

The Board’s Practice Notice on Costs Awards clarifies that these examples are non-exhaustive; in awarding costs under this ground, the Registrar will have regard to the “overall context” to determine whether there was undue delay or expense in the proceeding, including (i) the nature of purpose of the proceeding, (ii) the length and causes of the delay, and (iii) the extent of the causes of the expenses incurred by the party, as well as other additional contextual factors that may be raised in the request for costs.

Confidentiality Orders

Prior to April 1, 2025, all materials that filed in proceeding before the Board were accessible online to competitors and the public alike. Parties to objection, opposition, or section 45 cancellation proceedings may now request that the Registrar order that all or some of the evidence be kept confidential.

Requests must be made prior to submitting the evidence in issue. The requesting party has the burden to provide sufficient information to fulfil the three-part test for confidentiality orders set forth by the Supreme Court of Canada in Sierra Club of Canada v Canada (Minister of Finance), 2002 SCC 41 at para 53 and as recast in Sherman Estate v Donovan, 2021 SCC 25 at para 38:

1. Court openness poses a serious risk to an important public interest
2. The confidentiality order is necessary to prevent that risk because reasonably alternative measures (e.g., redacting information) will not prevent the risk; and
3. The benefits of the order outweigh its negative effects

Parties should note that a request does not affect a party’s deadline for submitting and serving evidence unless that party specifically requests an extension of time pursuant to s. 47 of the Act either prior to or in connection with the request for a confidentiality order. The Board’s Practice Notice on Confidentiality Orders clarifies that in such cases, the Registrar will generally grant a one-month extension of time.

Given the requirement to seek leave to introduce new evidence on appeal (discussed below), the addition of confidentiality orders may give parties more comfort to adduce commercially sensitive or confidential evidence in Board proceedings.

Case Management

Prior to April 1, 2025, case management was not available for Board proceedings. New amendments allow the Registrar to order case management and provide the Registrar with considerable flexibility to manage procedural aspects of the proceeding.

Case management may be necessary where matters need to be dealt with in a more efficient or cost-effective manner or where a specific proceeding requires “heightened and ongoing” direction. The Registrar will have the authority to fix the time by which or manner in which any step in a case-managed proceeding is to be completed, despite any time or manner provided for in the provisions of the Act or Regulations.

The Board’s Practice Notice on Case Management emphasizes that case management is reserved for exceptional circumstances will not be ordered as a matter of course. It provides three exemplary situations in which a case-management designation may be warranted: divisional applications in oppositions, corrections to protocol applications, and proceedings in which a confidentiality order has been made.

Changes to Trademark Disputes before the Federal Court

The amendments also brought about two changes to trademark disputes before the Federal Court that will have significant implications for appeals from the Board and in trademark enforcement proceedings.

Leave required to file new evidence on appeal

As of April 1, 2025, parties appealing a decision of the Board before the Federal Court must obtain leave to file new evidence on appeal under s. 56(5) of the Act. Prior to these amendments, parties were able to file new evidence on appeal as of right, and if the new evidence was held to be material the Federal Court would conduct a de novo review of the matter.

The addition of a leave requirement is expected to encourage parties to put their best evidence forward at the hearing before the Board, as parties can no longer assume the right to file new evidence on appeal. However, it remains to be seen what standard the Courts will apply in assessing leave to file new evidence.

This change underscores the value of involving an experienced trademark litigator early in the proceeding, to ensure all relevant evidence is before the Board and Federal Court (in the event of an appeal).

Use requirement in trademark enforcement proceedings

Registration of a trademark confers upon the registered owner certain exclusive rights that may be enforced against others by commencing proceedings for infringement or depreciation of goodwill under ss. 19, 20, and 22 of the Act. Prior to April 1, 2025, a registered owner could bring such a proceeding in the first three years of registration evidnece of use, thereby potentially shielding itself from cancellation proceedings under s. 45 of the Act.

Under the new subsection 53.2(1.1) of the Act, a registered owner who brings such a proceeding within the first three years of registration is not entitled to relief unless the trademark has been used in Canada in that period or special circumstances exist that excuse the non-use of the trademark. The statutory language of this provision mirrors that of s. 45 of the Act, however it is unclear whether the Court will apply the same standard of prima facie use in the context of infringement and depreciation of goodwill proceedings.

New Authorities of the Registrar Respecting Official Marks

Official marks are a distinct form of trademark protection in Canada which concern any badge, crest, emblem or mark adopted and used by a public authority in Canada as an official mark for goods or services. Once the Registrar has given public notice of the adoption and use of an official mark, the public is prohibited from using an official mark (or marks so nearly resembling as to be mistaken for an official mark) under s. 9(1)(n)(iii) of the Act. Official marks are maintained in perpetuity, and are not subject to abandonment for non-renewal or cancellation for non-use under s. 45 of the Act.

Official marks can therefore pose a significant barrier to businesses’ ability to register trademarks. Prior to the coming into force of the amendments, rightsholders could challenge the validity of official marks by seeking declaratory relief or judicial review from Federal Court—a complex, costly, and rarely used process.

The new amendments provide a new summary procedure for clearing inactive or invalid official marks for adoption and use by the public. Under the new ss. 9(3) and 9(4) of the Act, the Registrar may—on its own initiative or upon request of any person that has paid the prescribed fee—give public notice that the official mark is no longer valid because the entity that requested public notice is no longer a public authority or has ceased to exist.

These changes present a more efficient and less costly procedure for parties to challenge official marks cited by Examiners during prosecution of trademark applications. However, questions remain regarding the process surrounding the new authority under s. 9(4) of the Act. For example, given that the amendments do not create an adversarial proceeding between the requesting party and the holder of an official mark, it remains to be seen what procedural rights (e.g., the right to make submissions, to adduce evidence, or to request a hearing), if any, the requesting party will enjoy.

The above is intended as a summary of Canadian legal news and is not legal advice. For more information, please contact a member of our Trademarks Team.