Order Fixing April 1, 2025 as the Day on Which Certain Provisions of the Budget Implementation Act, 2018, No. 2 Come into Force: SI/2025-12

Canada Gazette, Part II, Volume 159, Number 5

Registration
SI/2025-12 February 26, 2025

BUDGET IMPLEMENTATION ACT, 2018, NO. 2

Order Fixing April 1, 2025 as the Day on Which Certain Provisions of the Budget Implementation Act, 2018, No. 2 Come into Force

P.C. 2025-75 February 5, 2025

Her Excellency the Governor General in Council, on the recommendation of the Minister of Industry, under subsection 242(2) of the Budget Implementation Act, 2018, No. 2, chapter 27 of the Statutes of Canada, 2018, fixes April 1, 2025 as the day on which sections 215 to 217, 219, 221 to 223 and 225 to 228 of that Act come into force.

EXPLANATORY NOTE

(This note is not part of the Order.)

Proposal

This Order in Council, made under subsection 242(2) of the Budget Implementation Act, 2018, No. 2 (the Budget Implementation Act), chapter 27 of the Statutes of Canada, 2018, fixes April 1, 2025, as the day on which sections 215 to 217, 219, 221 to 223 and 225 to 228 of that Act come into force.

Objective

The objective of this Order is to bring into force the remaining amendments to the Trademarks Act (the Act) intended to strengthen, modernize and enhance the efficiency and effectiveness of Canada’s trademark regime, in alignment with the 2018 Intellectual Property (IP) Strategy. It addresses key stakeholder concerns by introducing, among other things, the requirement to show use to enforce a trademark within the first three years after registration, a mechanism to withdraw official marks that are owned by entities that no longer exist or are not public authorities, improve the efficiency of trademark dispute resolution, and discourage undesirable behaviours in proceedings before the Registrar of Trademarks (the Registrar) such as those which cause undue delay or expense. It also supports broader Government priorities, including fostering innovation, protecting IP rights, and strengthening the Canadian economy.

Background

The Canadian Intellectual Property Office (CIPO) is the federal agency responsible for administering and processing Canada’s IP system. This includes overseeing the registration and protection of trademarks, patents, industrial designs, and copyrights, serving as a vital resource for businesses and individuals seeking to secure and protect their IP rights.

In April 2018, the Government of Canada announced their IP Strategy to help creators, entrepreneurs and innovators better understand IP and protect their IP rights and to give them an easier access to a more efficient and effective IP regime. To that end, the IP Strategy proposed, among other elements, a series of targeted legislative amendments specifically designed to safeguard against the abusive enforcement of IP rights and to improve the efficiency of resolution of IP disputes. The misuse of the trademark regime prevents businesses from efficiently registering and using their trademarks, increases costs and endangers businesses’ hard-earned reputations. The Budget Implementation Act, which received royal assent on December 13, 2018, implemented this legislative portion of the IP Strategy by introducing several amendments to the Act.

The Budget Implementation Act set out five new authorities to the Registrar to be exercised in the context of proceedings before the Trademarks Opposition Board (the Board) and in relation to official marks, which required the drafting of amendments to the Trademarks Regulations (the Regulations). It also introduced other amendments connected to trademark-related proceedings before the Federal Court:

• Section 215: give notice that the previous public notice giving protection to an official mark no longer applies because the entity that holds the official mark is not a public authority or no longer exists;
• Subsection 217(1) and section 219: treat an opposition or objection proceeding as withdrawn when an opponent or objector is in default in the continuation of the proceeding;
• Subsection 217(2) and sections 221 and 222: award costs in proceedings before the Board;
• Section 223: grant confidentiality orders to restrict the public’s access to confidential information submitted; and
• Section 228: provide specific regulation-making authority to allow the Registrar to case-manage proceedings in a more efficient manner under sections 11.13, 38 and 45 of the Act.

With the exception of sections 217 and 219, these authorities required the drafting of amendments to the Regulations.

In addition to these authorities, other amendments to the Act were introduced under the Budget Implementation Act:

• Section 216: allow a person to use a badge, crest, emblem or mark described in subparagraph 9(1)(n)(iii) of the Act if, at the time of use, the entity that made the request for a public notice under paragraph 9(1)(n) with respect to the badge, crest, emblem or mark is not a public authority or no longer exists;
• Section 225: introduction of the requirement to show use in infringement proceedings to enforce a registered trademark in the first three years after its registration;
• Section 226: removal of the automatic right to file additional evidence in appeals of the Registrar’s decisions at the Federal Court; and
• Section 227: provide specific regulation-making authority to allow the awarding of costs in proceedings under sections 11.13, 38 and 45 of the Act.

Implications

The provisions of the Budget Implementation Act brought into force by this Order, along with the amendments to the Regulations, are consistent with the IP Strategy, as they will prevent abusive practices in trademark-related proceedings by, for example, allowing the Registrar to award costs in proceedings before the Board. They also introduce the requirement to show use in infringement proceedings to enforce a registered trademark in the first three years after its registration. This latter provision ensures that registered trademark owners use their trademarks in the Canadian marketplace before attempting to enforce their registered rights in court. Use was, and continues to be, the foundation of Canadian trademark law and paramount for the enforcement of trademark rights in Canada, the United States and other common law jurisdictions.

The provisions will also modernize and increase the efficiency and effectiveness of the trademark dispute resolution system by, for example, allowing the Registrar to practise case management to deal with proceedings before the Board in an efficient and cost-effective manner. They also remove the guaranteed ability to file additional evidence on appeal to the Federal Court from any decision of the Registrar, a change that is also balanced with the introduction of the ability for parties to obtain a confidentiality order from the Registrar when they file commercially sensitive or personal information in evidence before the Board. With the availability of confidentiality orders, parties may be less inclined to withhold relevant evidence which includes sensitive or economically valuable information, which will prevent “dual litigation” that is both inefficient and potentially abusive, particularly to small or medium-sized enterprises (SMEs).

The provisions brought into force by this Order also allow the Registrar to give public notice that the prohibition to adopt or use a particular official mark no longer applies in circumstances where the entity that holds the official mark is not a public authority or has ceased to exist, thereby avoiding the trademark owners of taking on onerous procedures before the Federal Court. This will prevent good faith users from being blocked from registering their trademarks due to the presence of an official mark that is invalid.

Consultation

Innovation, Science and Economic Development Canada held consultations in 2017 on the creation of a National IP Strategy. Participants included academia, legal practitioners, industry representatives and IP rights holders. The Strategy contained legislative proposals, some of which were intended to address key gaps in the existing trademark legislative framework and concerns raised by stakeholders during consultations. Targeted legislative amendments to address these gaps were made to the Act in the Budget Implementation Act.

CIPO followed up with three rounds of consultations on the proposed amendments to the Regulations in 2022 and 2023. A summary of the comments received are outlined in the consultation section of the Regulatory Impact Analysis Statement for the proposed regulatory amendments. These consultations confirmed broad support for the proposed changes and highlighted the importance of enhancing efficiency in trademark proceedings.

Contact

Neena Kushwaha
Chairperson
Trademarks Opposition Board
Canadian Intellectual Property Office
Innovation, Science and Economic Development Canada
Telephone: 613‑864‑4790
Email: neena.kushwaha@ised-isde.gc.ca