Regulations Amending the Trademarks Regulations: SOR/2025-19

Canada Gazette, Part II, Volume 159, Number 5

Registration
SOR/2025-19 February 6, 2025

TRADEMARKS ACT

P.C. 2025-76 February 5, 2025

Her Excellency the Governor General in Council, on the recommendation of the Minister of Industry, makes the annexed Regulations Amending the Trademarks Regulations under paragraphs 65(i)footnote a, (j)footnote a, (k)footnote a, (n)footnote b, (o)footnote b and (p)footnote b and 65.2(b)footnote c and section 65.3footnote d of the Trademarks Act footnote e.

Regulations Amending the Trademarks Regulations

Amendments

1 Paragraph 4(2)(h) of the Trademarks Regulations footnote 1 is replaced by the following:

2 Section 26 of the Regulations is replaced by the following:

Fee — paragraph 9(1)(n) or (n.1) of Act

26 Any person or entity that requests the giving of public notice under paragraph 9(1)(n) or (n.1) of the Act must pay the fee set out in item 4 of the schedule to these Regulations.

Fee — subsection 9(4) of Act

26.01 For the purpose of subsection 9(4) of the Act, the fee to be paid by a person who requests that public notice be given under that subsection is the fee set out in item 5 of the schedule to these Regulations.

3 The Regulations are amended by adding the following after section 58:

Costs

58.1 (1) The Registrar may, on request, award costs against a party to an opposition proceeding in the following amounts:

Restriction

(2) The Registrar must not award costs if the opposition proceeding is ended before the final decision is issued.

Non-application

(3) Subsection (1) does not apply if

Request for costs

58.2 (1) A request by a party that costs be awarded must be filed using the online service that is designated by the Registrar as being accepted for that purpose and must specify the reasons for the request and the circumstances for which costs are sought.

Timing of request

(2) The request for costs must be filed

Representations

58.3 The Registrar must give the other party notice of the request for costs and an opportunity to make written representations, which must, within 14 days after the day on which the notice is given, be made using the online service that is designated by the Registrar as being accepted for that purpose.

4 The Regulations are amended by adding the following after section 74:

Costs

74.1 (1) The Registrar may, on request, award costs against a party to a proceeding under section 45 of the Act in the following amounts:

Restriction

(2) The Registrar must not award costs if the proceeding is ended before the final decision is issued.

Non-application

(3) Subsection (1) does not apply if

Request for costs

74.2 (1) A request by a party that costs be awarded must be filed using the online service that is designated by the Registrar as being accepted for that purpose and must specify the reasons for the request and the circumstances for which costs are sought.

Timing of request

(2) The request for costs must be filed

Representations

74.3 The Registrar must give the other party notice of the request for costs and an opportunity to make written representations, which must, within 14 days after the day on which the notice is given, be made using the online service that is designated by the Registrar as being accepted for that purpose.

5 The Regulations are amended by adding the following after section 93:

Costs

93.1 (1) The Registrar may, on request, award costs against a party to an objection proceeding in the following amounts:

Restriction

(2) The Registrar must not award costs if the objection proceeding is ended before the final decision is issued.

Non-application

(3) Subsection (1) does not apply if

Request for costs

93.2 (1) A request by a party that costs be awarded must be filed using the online service that is designated by the Registrar as being accepted for that purpose and must specify the reasons for the request and the circumstances for which costs are sought.

Timing of request

(2) The request for costs must be filed

Representations

93.3 The Registrar must give the other party notice of the request for costs and an opportunity to make written representations, which must, within 14 days after the day on which the notice is given, be made using the online service that is designated by the Registrar as being accepted for that purpose.

6 The Regulations are amended by adding the following after section 95:

Confidentiality Order Under Section 45.1 of Act

Confidentiality order

95.1 (1) A party to a proceeding under section 11.13, 38 or 45 of the Act who makes a request to the Registrar under subsection 45.1(1) of the Act for an order that evidence be kept confidential must submit the following information to the Registrar:

Public interest

(2) In deciding whether to make a confidentiality order under subsection 45.1(4) of the Act, the Registrar must consider the public interest in open and accessible proceedings.

Confidential designation

(3) A party who submits information to the Registrar that is subject to a confidentiality order must ensure that the information is designated as confidential.

Revocation or amendment of order

(4) For greater certainty, at any time in the proceeding, the Registrar may, under subsection 45.1(4) of the Act, amend the confidentiality order if the Registrar considers it appropriate in the circumstances or revoke it if the Registrar is no longer satisfied that the evidence should be kept confidential.

Registrar’s Powers

Orders and directions

95.2 The Registrar may, as the circumstances and considerations of fairness permit, make any order or give any direction that the Registrar considers appropriate to deal with a proceeding under section 11.13, 38 or 45 of the Act in an efficient and cost-effective manner.

Case management

95.3 (1) The Registrar may, at any time in a proceeding under section 11.13, 38 or 45 of the Act, designate the proceeding as a case-managed proceeding to which this section applies, subject to any terms that the Registrar considers appropriate.

Circumstances to be considered

(2) In determining whether to designate a proceeding as a case-managed proceeding, the Registrar must consider all the surrounding circumstances, including

Time and manner

(3) The Registrar may fix the time by which or the manner in which any step in a case-managed proceeding is to be completed, despite any time or manner that is provided for under the Act with respect to the proceeding.

7 The schedule to the Regulations is amended by replacing the references after the heading “SCHEDULE” with the following:

(Sections 14, 26, 26.01, 26.1, 32 and 36, paragraph 40(b), section 42, subsection 58.1(1), sections 60, 62, 64 and 67, subsection 74.1(1), sections 75 and 78, subsections 93.1(1) and 94(1), section 95, subparagraph 149(d)(ii), paragraph 153(a) and sections 154 and 160)

8 Item 5 of the schedule to the Regulations is replaced by the following:
Item

Column 1

Description

Column 2

Fee ($)
4 Request for the giving of public notice under paragraph 9(1)(n) or (n.1) of the Act, for each badge, crest, emblem, mark or armorial bearing 694.00
5 Request under subsection 9(4) of the Act for the giving of public notice that subparagraph 9(1)(n)(iii) of the Act does not apply with respect to a badge, crest, emblem or mark 325.00

Coming into Force

9 These Regulations come into force on the day on which sections 227 and 228 of the Budget Implementation Act, 2018, No. 2, chapter 27 of the Statutes of Canada, 2018, come into force, but if these Regulations are registered after that day, they come into force on the day on which they are registered.

REGULATORY IMPACT ANALYSIS STATEMENT

(This statement is not part of the Regulations.)

Issues

In April 2018, the Government of Canada launched the Intellectual Property (IP) Strategy, which contained legislative proposals, some of which were intended to address the following key gaps in the current trademark legislative framework and concerns raised by stakeholders during consultations:

Targeted legislative changes were made to the Trademarks Act (the Act) in the Budget Implementation Act, 2018, No. 2 (the Budget Implementation Act), which received royal assent on December 13, 2018, to address these gaps. These legislative changes introduced measures to improve the efficiency of trademark dispute resolution and discourage undesirable behaviours in proceedings, such as those which cause undue delay or expense.

The legislative changes introduced under the Budget Implementation Act have not yet taken effect, as necessary amendments to the Trademarks Regulations (the Regulations) are required to support them.

Together with the legislative changes, the Regulations Amending the Trademarks Regulations (the amendments) will create a more efficient and cost-effective resolution of proceedings before the Trademarks Opposition Board (TMOB) and allow those applying for trademark registrations to efficiently overcome objections raised on the basis of official marks.

Background

The Canadian Intellectual Property Office (CIPO) is the federal agency responsible for the administration and processing of the IP system in Canada. It oversees the registration and protection of trademarks, patents, industrial designs and copyrights, serving as a crucial resource for businesses and individuals looking to secure their IP rights within the country.

The TMOB is part of the CIPO. It has delegated authority from the Registrar of Trademarks (the Registrar) to conduct hearings and render quasi-judicial decisions on three types of proceedings: oppositions to the registration of a trademark, non-use expungements of trademark registrations and objections to entering an indication on the list of geographical indications. The Trademarks and Industrial Designs Branch (TIDB) is also part of the CIPO and is responsible for the registration and protection of trademarks. Both the TMOB and the TIDB play a pivotal role in maintaining the integrity of Canada’s trademark system.

The legislative enhancements introduced by the Budget Implementation Act include the authority for the Registrar to award costs against a party to a proceeding, issue confidentiality orders and give public notice that the prohibition to adopt or use a particular official mark no longer applies. The Budget Implementation Act also provided specific regulation-making authority to allow the Registrar to case-manage proceedings and set a fee in relation to the request to the Registrar to give public notice that a particular official mark no longer applies.

Together with the legislative changes, the amendments resolve the key gaps in the current trademark legislative framework identified by the 2018 IP Strategy. Among the issues identified were the inability to award costs in trademark proceedings against parties that engaged in undesirable and inefficient behaviours, a lack of protection for confidential information from public disclosure during these proceedings and the absence of effective case management strategies to advance trademark proceedings in the most efficient and cost-effective manner. These gaps hinder the efficiency of the trademark dispute resolution process, burden the parties involved and also strain the resources of the TMOB.

An efficient trademark dispute resolution is important because a party may require a registration to protect its rights. For example, a registration is required to record trademark rights with the Canadian Border Services Agency to combat the importation of counterfeits. A registration also assists with the protection of trademark rights in the online marketplace.

The amendments will create a more efficient resolution of proceedings before the TMOB and allow those applying for trademark registrations to efficiently overcome objections raised on the basis of official marks.

Costs awards

Contrary to what is done in proceedings before the Federal Court, a number of federal tribunals in Canada and several IP offices around the world, the TMOB does not currently have the authority to award costs against a party to a proceeding to curtail inefficient behaviours. For example, a party may presently continue to pursue an opposition proceeding even when the record shows that the application was filed in bad faith, split a trademark application into several to force multiple oppositions or cancel a hearing at the last minute. These behaviours are problematic as they impose unnecessary expenses on parties and occupy the TMOB time and resources. A party may also engage in unreasonable conduct during a proceeding, which can greatly affect the timeliness of it. When they occur, these behaviours have a significant impact on the resources required from both parties and the TMOB during the course of a proceeding.

Confidentiality orders

Additionally, the TMOB cannot currently prevent the disclosure of commercially sensitive or personal information submitted to the Registrar in proceedings, as the current legislation requires the public availability of all documents, aligning with the Open Court Principle. This can lead to parties filing minimal or incomplete evidence before the TMOB, with the goal of introducing the rest of the evidence when appealing the Registrar’s decision to the Federal Court, where confidential evidence can be filed under seal. In doing so, parties may leave out important information that could impact the outcome of their case before the TMOB.

Case management

At present, the ability of the TMOB to case manage its proceedings is inadequate. The absence of an express authority in the legislation allowing the Registrar to give a direction or make an order that the Register considers appropriate to deal with a proceeding in an efficient and cost-effective manner prevents the TMOB from being flexible and responsive to fit the different needs and circumstances of each case. For example, at present, the TMOB lacks the ability to consolidate cases concerning very similar trademarks and involving the same parties or abbreviate timelines. This is particularly problematic in the case of certain procedural complexities that may occur in processes that were introduced following Canada’s recent accession to the Singapore Treaty on the Law of Trademarks (the Singapore Treaty) and the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the Madrid Protocol) in 2019.

Case management will serve to manage the procedural, scheduling and timetabling aspects of a proceeding prior to decision, thus minimizing waste in terms of delay and costs. These capabilities are crucial for the TMOB to ensure the efficient and cost-effective resolution of cases.

Official marks

Official marks are a type of prohibited mark intended to preclude any person from capitalizing on a well known, respected public symbol and adopting it for his or her own goods or services. Prohibited marks are also intended to be associated with public institutions, not involved in trade or business, but which nevertheless are deemed to be invested with respectability, credibility and other civic virtues. In order for an entity to claim the benefit of an official mark, it must be a public authority in Canada. One feature of official marks is that they are not subject to renewal and, as such, are on the register indefinitely. Objections to trademark applications on the basis of official marks are commonly raised, as no person can register a trademark consisting of a mark so nearly resembling another that it is likely to be mistaken for an official mark.

The Budget Implementation Act introduced new provisions to the Act which, when in force, will create a simple and efficient mechanism for the Registrar to give public notice that the provision related to official marks does not apply with respect to a particular mark in circumstances where the mark holder is not a public authority or has ceased to exist. More specifically, the introduction of these new provisions is meant to create a simple and efficient mechanism to allow the Registrar to, on their 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, thereby avoiding the trademark owners of taking on onerous procedures before the Federal Court of Canada.

Objective

The amendments support the legislative framework set out in the Budget Implementation Act for the CIPO to advance the priorities set out in the IP Strategy.

The implementation of a cost awards regime is intended to discourage parties from adopting undesirable behaviours during proceedings before the TMOB. The possibility of having to pay costs to the other party may incentivize parties to reduce undesirable behaviours and efficiently advance proceedings. The costs award regime seeks to reduce the time it takes to reach a decision and the overall cost to parties and the TMOB.

The amendments allowing for confidentiality orders aim to allow parties to file complete evidence, including confidential information, in proceedings. With the availability of confidentiality orders, parties may be less inclined to withhold relevant evidence, which includes sensitive or economically valuable information. As a result, it is anticipated that the Registrar will have access to a more complete record in coming to a decision.

The amendments for case management are intended to allow for a more efficient resolution of proceedings and reduce the duplication of effort in complex proceedings, including those against related applications or registrations. Notably, with case management, it is anticipated that the Registrar will be able to consolidate proceedings and deem documents submitted in one case to be submitted in multiple cases, as appropriate. Cases will be handled more swiftly and at a lower cost as a result, and parties and the TMOB will allocate time and resources in a more efficient manner.

The amendments for official marks will establish the fee to request the giving of a public notice indicating that the provision related to official mark does not apply with respect to a particular mark in circumstances where the mark holder is not a public authority or has ceased to exist, thereby eliminating the need for trademark owners to take on onerous procedures before the Federal Court of Canada. This new mechanism will also help remove some of the official mark “deadwood,” which will allow businesses to use their trademark in the marketplace faster, thus accelerating their ability to innovate, compete and create branding value through IP.

Description

Costs awards

The amendments put in place a regime that will award costs in a manner to discourage and prevent undesirable behaviours in proceedings and incentivize parties to efficiently advance proceedings.

The amendments provide that at the request of a party and in certain circumstances, the Registrar will consider awarding costs in fixed amounts against the other party in a proceeding. The Registrar will not award costs on their own initiative. To inform the decision on costs, the amendments require that a request for costs includes the reasons for the request and the particulars of the circumstances for which costs are sought and will need to be filed using the designated online service. The amendments specify when parties may make the request without prolonging the proceeding. The decision on costs, and the reasons for it, will be included in the Registrar’s final disposition of the proceeding.

The amendments set out the circumstances in which the Registrar may award costs. In the case of an opposition proceeding, the Registrar may do so where a decision is issued and

In the case of an expungement or objection proceeding, the amendments provide that the Registrar will only award costs where a decision is issued and 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 that causes undue delay or expense in a proceeding.

The amendments set the numbers of costs as a function of the fees for initiating a proceeding set out in the schedule to the Regulations, as follows:

Table 1: Monetized costs awards according to the fees set out in the schedule to the 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. $10,857.60 N/A N/A
A divisional application is filed on or after the day on which the original application is advertised and a decision with respect to that divisional application is issued under subsection 38(12) of the Act. $2,171.52 N/A N/A
A request for a hearing is withdrawn less than 14 days before the day on which the hearing is scheduled to take place. $2,171.52 $1,158.84 $2,896.06
A party engages in unreasonable conduct which causes undue delay or expense in the proceeding. $5,428.80 $2,897.10 $7,240.15

To ensure that parties will not be subject to costs awards for acts that took place prior to the coming into force of the amendments, the Registrar will not award costs in the following circumstances:

Confidentiality orders

The amendments set out how a party to a proceeding before the TMOB will be able to request an order that some evidence be kept confidential. The amendments specify that a request for a confidentiality order will need to contain

The amendments provide that in deciding whether to make a confidentiality order, the Registrar must consider the public interest in open and accessible proceedings, in keeping with the Open Court Principle.

Case management

The amendments clarify how case management may be used in proceedings.

First, the amendments 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 heightened and ongoing direction, the Registrar will be able to, at any time in a proceeding, designate the proceeding as a case-managed proceeding, subject to any terms that the Registrar considers appropriate. It is anticipated that the number of proceedings requiring such intervention at the TMOB should be low.

In determining whether to designate a proceeding as a case-managed proceeding, the amendments provide that the Registrar must consider all the surrounding circumstances, including

In relation to a case-managed proceeding, the amendments enable the Registrar to give a direction or make an order that fixes, despite any time or manner that is provided for under the Act with respect to the proceeding, the time by which or the manner in which any step in the case-managed proceeding is to be completed. These amendments permit the Registrar to, for example, consolidate cases resulting in efficiencies throughout the proceedings.

Official marks

The amendments include the addition of a provision and an item in the schedule to the Regulations to set the prescribed fee, which introduces the authority whereby the Registrar may, on their own initiative or at the request of a person who pays a prescribed fee, give public notice that the provision related to official marks does not apply with respect to a particular mark in specific circumstances.

Regulatory development

Consultation

The CIPO has undertaken two preliminary consultations (a high-level one on April 11, 2022, and a second more thorough and direct consultation with firms in May–June 2022). A third, more substantive consultation process was conducted for a period of 75 days from November 21, 2022, to February 3, 2023.

April 11, 2022, Consultation

This preliminary consultation was a high-level, fact-based presentation to explain the TMOB current context, the operational, policy and financial pressures and, lastly, the value proposition of introducing costs awards, confidentiality orders and case management to improve service delivery in the coming years.

This was the first attempt at socializing the proposed regulatory changes with the profession and agent community. Overall, stakeholders were very supportive of the measures being introduced in concept and looked forward to the more robust consultation in the coming months.

May–June 2022 Consultation

Secondary consultations took place in May and June 2022. Representatives from key IP associations, such as the Intellectual Property Institute of Canada, the Fédération Internationale des Conseils en Propriété Intellectuelle, the International Trademark Association and IP lawyers from the Canadian Bar Association attended. Multiple Canadian IP firms were also among the stakeholders consulted. This second consultation sought specific and detailed feedback from the stakeholder community on introducing costs awards, confidentiality orders and case management for improving service delivery in the coming years. A number of changes were made to an earlier version of the proposed regulations and draft practice notices following these sessions to further reduce the overall potential burden on parties, clarify certain procedures, and facilitate the successful implementation of the Registrar’s new authorities.

CIPO fall 2022 consultation

CIPO held a third consultation from November 21, 2022, to February 3, 2023, to canvass opinions, including those from key stakeholders that would be impacted by the proposed amendments.

This consultation was held exclusively online for a period of 75 days for review and feedback by the profession, domestic and international stakeholders, and to anyone who has an interest in Canada’s trademark regime in general. CIPO received a total of six submissions during this consultation. Overall, the feedback was very positive and a general support for the proposed changes was felt from the stakeholders throughout the comments and suggestions. For costs awards, a few comments concerning the proposed timing to file the request for costs were received, as well as some suggestions revolving around the circumstances in which the Registrar may award costs. With respect to confidentiality orders, the feedback received dealt mainly with the filing of the request itself and the content covered by the order. Stakeholders were supportive of the use of case management for greater efficiency in the resolution of oppositions in particular.

The feedback received has been made available to stakeholders on CIPO’s website and influenced the proposed amendments to the Regulations.

Official marks consultation

From May 31 to August 29, 2022, CIPO held an online consultation seeking feedback from the IP professional community and the Canadian public on a proposed practice of the Office of the Registrar of Trademarks (the Office) with respect to requesting that public notice be given by the Registrar under the new proposed legislative provisions.

CIPO received a total of six submissions, four of which were comprehensive. Of the feedback received, two submissions expressed general support for the proposed practice and, overall, no stakeholders were explicitly against it. The feedback received was primarily questions and comments relating to the steps of the process. With respect to the fee, several stakeholders were of the opinion that the fee for making a request should be the same or greater than a request for public notice with respect to a badge, crest, emblem, mark or armorial bearing under the Act to avoid frivolous requests.

The feedback received has been made available to stakeholders on CIPO’s website and was taken into consideration in finalizing the proposed practice and the proposed fee.

Prepublication in the Canada Gazette, Part I

A draft of the proposed amendments was prepublished in the Canada Gazette, Part I, on June 8, 2024, for a public comment period of 30 days. CIPO reached out to clients and stakeholders through a variety of channels to encourage them to submit comments.

CIPO received a total of six submissions from six respondents via the Online Regulatory Commenting System and one email submission. The respondents included two individuals, two IP law firms (i.e. Gowling WLG Canada and Osler) and two IP associations (i.e. the Intellectual Property Institute of Canada [IPIC] and the International Trademark Association [INTA]). The comments received can be viewed in the “closed consultations with published comments” section in the Canada Gazette, Part I.

Costs awards, confidentiality orders and case management

The comments received on the proposed regulatory amendments were generally positive and supportive. Some suggested that further limits or an increase in the Registrar’s discretion in certain situations would be preferable, such as with respect to costs awards, while others focused on obtaining clarification or the addition of certain provisions. One IP association recognized the CIPO’s extensive consultations prior to drafting the proposed amendments.

The majority of the comments received were regarding costs awards. Two stakeholders expressed the need for greater clarity in the proposed amendments with respect to unreasonable conduct and suggested that they be amended to limit unreasonable conduct to an exhaustive list of behaviours set out in the proposed amendments. In respect to the amounts for costs awards, one IP association was of the view that the proposed amount for an application refused on the ground that it was filed in bad faith is too high, and an IP firm suggested that it would be beneficial if the Registrar had discretion to lower costs awards according to the circumstances. Another IP firm suggested an amendment to clarify when a divisional application would attract costs consequences. Other comments concerning the filing of the request for costs awards, the policy according to which costs will only be awarded when proceedings reach a final decision and the transitional provision provided in the proposed amendments have also been received.

Concerning confidentiality orders, one IP association suggested that the proposed amendments contain more specific information on how to designate confidential information when submitted to the Registrar. They also noted that the wording of the proposed amendments could result in the issuance of multiple confidentiality orders, as opposed to amending a previously issued confidentiality order, which would be more efficient and provide additional clarity to the parties. Comments were also received suggesting that the TMOB should strive to find an appropriate balance between confidentiality and disclosure in its written decisions, as they are an important resource for practitioners and parties.

With respect to case management, one IP association recommended that the proposed amendments be amended to clearly state the Registrar’s power to vary the times or manners provided for in the Regulations for case-managed proceedings. Comments were also received from two IP firms suggesting that case management orders not abbreviate or otherwise change the well-established deadlines in proceedings. Finally, another IP firm suggested that a joint request or mutual consent from the parties should be considered in determining whether a proceeding should be designated as a case-managed proceeding.

Official marks

No particular concerns were raised with respect to the proposed prescribed fee. The feedback provided was very similar to comments received in the previous consultation, which sought feedback on a proposed practice of the Office regarding the request that public notice be given by the Registrar under the new proposed legislative provisions. Such comments were, however, considered beyond the scope of the proposed amendments. Many of the submissions raised concerns over the process surrounding the new authority under subsection 9(4) of the Act, and while some concerns will be addressed by way of practice, such as the ability to request additional time to respond to an examination report and make documents available to all parties, other recommendations would require additional changes to the Act and do not fall within the scope of the legislative amendments passed by Parliament.

Of note, some stakeholders commented that the new authority contained in subsection 9(4) of the Act should be used to create an adversarial proceeding between the requesting party and the holder of an official mark once a request has been made. Contrary to proceedings before the TMOB, the new legislative authority set out in subsection 9(4) of the Act does not provide for an adversarial proceeding. Rather, it is designed to provide an efficient means for the Registrar to give public notice that the prohibition to adopt or use a particular official mark no longer applies. To that end, the Office will put in place a process that will allow for the Registrar to take into account information provided by a requesting party in determining whether a notice should be sent to the official mark holder requesting evidence of its public authority status.

Addressing stakeholder feedback from the prepublication

In determining whether to make changes based on comments received, the CIPO considered whether they aligned with the objective of the proposed amendments. Following an analysis of these, CIPO has determined that the majority of the amendments will remain unchanged from prepublication and that only a few changes to the Regulations were deemed necessary.

Response to comments related to costs awards

CIPO has not adjusted the proposed amounts for costs awards, as this suggested change did not align with the objective of introducing costs awards and the majority of stakeholder feedback. The provision allowing the Registrar to award costs when a divisional application is filed on or after the day on which the original application was advertised has been revised to clarify that costs will only be awarded on a divisional application for which a final decision is issued.

Response to comments related to confidentiality orders

The provision on confidentiality orders has been revised to clarify that, when a confidentiality order has been issued, the Registrar may amend the order if the Registrar considers it appropriate. This revision addresses concerns that the initial drafting of the provision could lead to the issuance of multiple confidentiality orders throughout a proceeding. The practice notice on confidentiality orders and the model order incorporated within it will also be amended to add more details concerning the serving and submitting to the Registrar of documents including confidential information.

Response to comments related to case management

CIPO’s intention behind the introduction of case management is to enhance procedural efficiency and minimize redundant efforts in complex proceedings, thus promoting swifter case resolution at reduced costs. CIPO does not expect that this new power will primarily be used to shorten deadlines in proceedings.

CIPO will address the other comments and concerns received on costs awards, confidentiality orders and case management, which were outside of the proposed amendments, by way of changes to the practice notices that will be published on CIPO’s website.

Response to comments related to official marks

After carefully considering all the feedback, no changes were made to the Regulations based on the comments received.

Modern treaty obligations and Indigenous engagement and consultation

The initial assessment examined the geographical scope and subject matter of the amendments in relation to modern treaties in effect and did not identify any potential modern treaty impacts.

Regulatory analysis

Costs of the amendments

The costs of the amendments are expected to fall under the low-cost impact category.

Costs to Canadians
Costs awards — Estimated costs in legal services from agents billed to clients

CIPO has conducted preliminary consultations with agents who practise in the area of trademarks in May and June 2022. They estimated that the preparation of a request for a cost awards for unreasonable conduct (party A) will take on average 1.5 hours of billable time. CIPO estimates that the preparation of a response to such a request by the other party (part B) will also take approximately the same amount of time.

The annualized cost for legal services for costs awards is $19,256 for the parties, as shown in Table 2.

Confidentiality orders — Estimated costs in legal services from agents billed to clients

CIPO estimates it will take a party approximately five hours to prepare a submission to request a confidentiality order, considering the information that will be required to be included in a request and the fact that a model confidentiality order will be included in the TMOB practice notice on confidentiality orders.

Table 2 has an annualized amount of $55,017 for the parties.

Official marks

The amendments set the fee to request to give public notice with respect to a particular mark. CIPO is projecting an annualized amount of $90,525 in revenue.

Table 2 has an annualized amount of $90,525 in revenue, which is considered as a cost to stakeholders.

Costs to CIPO
Costs awards — Estimated costs of office work from the TMOB

CIPO estimates the time value of office work involved in the processing of requests for costs awards to be between 30 minutes to two hours. Requests for costs awarded for an application for the registration of a trademark that is refused on the ground that it was filed in bad faith, for divisional applications and for the withdrawal of a request for hearing less than 14 days prior to the scheduled hearing will take about 30 minutes. However, the request for costs awards in cases of unreasonable conduct will be more time-consuming at two hours, as it will be required to review the file history and consider whether the behaviour was justifiable, considering all the circumstances surrounding the case.

Table 2 has an annualized amount of $3,071 for the TMOB.

Confidentiality orders — Estimated costs of office work from the TMOB

With respect to the assessment by the Registrar of a request for a confidentiality order, it is anticipated that it will take approximately three hours to issue a ruling granting the request, and an additional two hours (for a total of five hours) for a ruling refusing the request. In deciding whether to grant or refuse a request for a confidentiality order, the Registrar will have to consider the public interest in open and accessible proceedings and provide reasons in their decision as to why the proposed evidence is (or is not) a serious risk to a public interest. These will have to be carefully drafted. It is anticipated that once a good body of case law is developed at TMOB, this process will become more efficient.

The TMOB views requests for confidentiality orders as exceptional because they involve a major departure from the Open Court Principle. Considering this and based on the percentage of uptake of interlocutory rulings at the time of their introduction, the TMOB anticipates that confidentiality orders will be requested in 5% to 10% of all cases, so between 15 and 30 cases per year. A higher uptake of requests is expected at the beginning of the implementation of the amendments. This number will steadily decrease once a good body of case law is developed at TMOB.

Table 2 has an annualized amount of $9,829 for the TMOB.

Official marks — Estimated costs of office work from TIDB

CIPO will process the request and determine whether a notice to the official mark holder is necessary within 12 weeks upon receipt of a compliant request and payment of the prescribed fee. It is meant to create a simple and efficient mechanism for giving public notice in circumstances where the mark holder is not a public authority or has ceased to exist. The Registrar may, on their own initiative or upon receipt of a request and payment of the prescribed fee from any person, give notice that the previous public notice of official mark given no longer applies.

Table 2 has an annualized amount of $48,610 as costs to CIPO for employee costs.

Technology investments

CIPO will also assume fixed implementation costs associated with the modifications required to its IT systems to implement the amendments. The costs have been categorized and are presented below.

Table 2 has an annualized amount of $118,825 for the IT costs.

Table 2: Monetized costs
Impacted stakeholder Description of cost 10 years total (present value) Annualized amount
Canadians Costs awards agent cost $135,246 $19,256
Confidentiality order agent cost $386,417 $55,017
Official mark non-application fee $635,808 $90,525
CIPO Costs awards employee cost $21,573 $3,071
Confidentiality order employee cost $69,032 $9,829
Official mark non-application employee cost $341,417 $48,610
IT costs $834,579 $118,828
All stakeholders Total costs $ 2,424,073 $ 345,133

CIPO does not anticipate attributing any additional full-time equivalent for the delivery of the amendments. All efforts will be offset through greater efficiencies and time savings achieved through the amendments and reallocation of existing resources as needed.

Case management

The primary goal of case management is to manage the lifecycle of a case more effectively. This typically includes activities for efficient and streamlined processes. Effective case management generally minimizes waste in terms of delay and costs.

Adopting these procedures will save the TMOB money that it would have otherwise spent on less effective and efficient procedures. By its nature, case management seeks to reduce costs associated with judicial and quasi-judicial proceedings and, therefore, any costs associated with the implementation of case management at the outset will, at a minimum, be fully offset by the alternative of not having recourse to these more efficient tools and processes. No costs are attributed to case management. In contrast, it is expected to result in net savings over time.

Benefits

Overall, the amendments will benefit both CIPO and the parties before the TMOB. While each faces some costs at the outset, savings are also anticipated as the amendments introduce mechanisms that will streamline proceedings.

Benefits to parties

Confidentiality orders will allow a party to submit complete relevant evidence before the TMOB, including confidential information, when necessary for a decision to be reached. The case management provisions will allow for cases to be processed more quickly, and parties will save time and resources with the introduction of additional case management tools.

Benefits to the TMOB

The amendments will benefit the TMOB by improving its overall efficiency.

The length of the proceedings may decrease by the introduction of costs awards, as they will discourage undesirable behaviours, which will result in fewer delays during proceedings, occupy less of the TMOB’s time and resources, and therefore free up resources for other proceedings.

With the availability of confidentiality orders, parties will be less inclined to withhold relevant evidence that includes sensitive or economically valuable information. As a result, the TMOB will have a more complete record in coming to a decision, which will contribute to cases reaching a final decision sooner. Case management could streamline proceedings, which may reduce duplicated efforts where related applications or registrations are at issue.

As a result, it is anticipated that the length of proceedings will decrease and more cases will be processed more quickly, saving time and resources.

Small business lens

Policy choices have been made to limit cost impacts on small businesses and processes have been designed specifically to reduce complexity based on internal analysis and experience.

Costs awards

The implementation of the costs awards authority is set up in a way that, unlike many other costs regimes, the losing party does not have to pay some portion of the costs of the winning party, as this could have an outsized negative impact on small businesses who will have to be prepared to cover their costs and the other side’s legal fees, which could be substantially higher. Adopting this type of cost regime could have had the unintended consequence of discouraging small businesses from continuing with meritorious cases.

A policy of awarding costs to the winner has not been adopted because the IP Strategy was focused on discouraging undesirable behaviours, boosting efficiency and helping small and medium enterprises to better protect their IP rights, not providing compensation to a winning party. Instead, the costs regime is set up in a manner to discourage and prevent undesirable behaviours in proceedings and incentivize parties to efficiently advance proceedings. Small businesses now have recourse when they are subjected to undesirable behaviours by the other party. In addition, with a view to maintaining simplicity and providing predictability to parties, the number of circumstances in which costs will be awarded in expungement proceedings has been limited to only two, since it is more common for parties to represent themselves and, thus, more common for the TMOB to deal with small businesses in expungement proceedings. The length of the submissions for a request for costs awards will also be constrained by way of practice notice to minimize the administrative burden on parties.

Confidentiality orders

To eliminate the need for parties to draft a confidentiality order from scratch, or to engage in detailed negotiations with the other party with respect to its terms, a model order will be made available to parties on CIPO’s website. In addition, in order to help parties consider whether they should request a confidentiality order, the practice notice associated with this part of the amendments will precisely detail the legal test that the Registrar will apply when considering these requests.

Case management

It is the ability to exercise the authority itself that will reduce the impact on small businesses by allowing the TMOB to reduce duplication and efficiently manage related cases and cases where there are procedural irregularities. By reducing costs and expediting dispute resolution, the amendments will benefit small businesses that are often much more sensitive to the potentially large costs associated with quasi-judicial proceedings and less likely to be able to bear the burden of prolonged procedures.

Official marks

This procedure will help small businesses by providing them with a simple and cost-effective way to challenge official marks at a lower cost than having to go to the courts. This will reduce the risk of small businesses being prevented from using or registering their trademarks. It will also increase the transparency and accuracy of the Register of Trademarks, which will benefit all users of the trademark system.

One-for-one rule

The one-for-one rule does not apply to the amendments, as they will not result in an incremental administrative burden on businesses as defined in the Policy on Limiting Regulatory Burden on Business. While the amendments will impact the type of information required from the parties, and the timing and format under which such information will need to be provided (e.g. when making a submission for costs awards or confidentiality order), the purpose of this information is to aid the TMOB in deciding, streamlining or otherwise increasing the efficiency of proceedings, not for demonstrating compliance with the Regulations.

Regulatory cooperation and alignment

The amendments have linkages to international agreements (the Singapore Treaty and the Madrid Protocol) and also align with other jurisdictions.

International agreements and obligations
Singapore Treaty

The Singapore Treaty is a trademark law treaty that simplifies and standardizes the administrative requirements and procedures of the trademark offices of member countries. It establishes a maximum set of conditions that can be imposed on applicants, and makes procedures more user-friendly, more consistent internationally and less time-consuming for applicants. The provisions for the entering into force for Canada occurred on June 17, 2019.

The amendments to case management will allow CIPO to more efficiently deal with divisional applications, as a resulting obligation of Article 7 — Division of Application and Registration of the Singapore Treaty.

Madrid Protocol

The Madrid Protocol offers businesses and innovators the possibility of obtaining trademark protection in a number of countries by filing one single international application in one language with the World Intellectual Property Organization (WIPO). One overall payment is made in one currency, simplifying the application process and providing financial savings for those seeking to obtain and maintain protection for their trademarks internationally. The provisions for the entering into force for Canada occurred on June 17, 2019.

The amendments to case management will allow the TMOB to more efficiently deal with corrections received from the WIPO as a resulting obligation of the Madrid Protocol.

Assessment of costs awards in international jurisdictions

In developing the amendments, the TMOB performed an analysis of trademark offices in jurisdictions with a trademark regime similar to Canada’s, namely the European Union Intellectual Property Office, Australia, the United Kingdom, New Zealand and the United States. Results showed that when awarding costs, these jurisdictions either adhere to a fixed amount, or use a sliding scale, giving a range of possible amounts. In cases where a sliding scale is used, the existence of unreasonable behaviours is but one factor to determine whether to grant on the upper end of the cost scale. Other factors include the complexity of the proceeding and the amount of time and resources required. In other words, these cost regimes are constructed so that the losing party pays a portion of the winning party’s expenses, with the amount increasing in cases where unreasonable behaviours occurred. In the amendments, the existence of undesirable behaviour will not be a factor but rather the threshold for awarding costs. Further, costs will be awarded in increasing amounts and be a function of the fees for initiating a proceeding.

European Union Intellectual Property Office

The general rule is that the party that terminates the proceedings, by withdrawing the European Union trademark application or by withdrawing the opposition, will bear the fees incurred by the other party as well as all costs incurred by it that are essential to the proceedings.

Australia

In Australia, a party to a proceeding must apply for an award of costs either during the proceeding or within three months after the decision. Before awarding, the Registrar must give each party a reasonable opportunity to be heard in relation to the award of costs. Their regulations contain a schedule outlining the costs, expenses and allowances to calculate the costs awards. Some are a set monetary amount, while others give an hourly rate, up to a maximum (e.g. attendance at a hearing by registered trademarks attorney).

United Kingdom

Costs in proceedings before the Comptroller are informed by guidance drawn from a standard published scale. However, the Comptroller also has the freedom to award costs of the scale to deal proportionately with unreasonable behaviour. The scale specifies variable standard amounts for particular aspects of the proceeding (e.g. preparation of a statement of opposition or evidence).

New Zealand

The Commissioner’s standard practice is to order the unsuccessful party in proceedings to pay costs to the successful party in accordance with a scale of costs. Costs are not to be used as a punishment or an expression of disapproval of the unsuccessful party. However, the Commissioner will depart from scale if the circumstances of the case or the behaviour of a party warrant it. In exceptional circumstances, the Commissioner may also award indemnity costs.

United States

While the United States has mechanisms for sanctioning unreasonable behaviours, this does not include costs. Each party bears its own costs for the proceeding.

Table 3 provides the numbers at a glance for the various jurisdictions studied.

Table 3: Costs award comparison of international jurisdictions
Jurisdiction Range Application of costs
European Union Approximately between Can$ 2,054 and Can$ 3,006 Automatic: the losing party (or the party that terminates the proceeding) bears the costs.
Australia Approximately between Can$ 2,816 and Can$ 4,890 Not automatic: the successful party may choose to submit a claim for costs.
United Kingdom Approximately between Can$ 4,913 and Can$ 12,622 and off-scale for unreasonable behaviour Not automatic: the successful party may request that an award of costs be made in its favour.
New Zealand Approximately between Can$ 2,773 and Can$ 3,892 and off-scale for unreasonable behaviour Automatic: The Commissioner orders the unsuccessful party to pay costs to the successful party.
United States N/A N/A: Each party bears its own costs for the proceeding.

Confidentiality orders and case management are common tools used by courts and administrative tribunals. The amendments are aligned with Canadian courts and tribunals. They are, in part, modelled after and take account of the rules of practice and procedure of a number of Canadian courts and federal administrative tribunals that administer comparable proceedings, including those of the Canadian Energy Regulator, the Competition Tribunal, the Canadian International Trade Tribunal, the Patented Medicine Prices Review Board, and the Canadian Radio-television and Telecommunications Commission.

Official marks are a unique feature of Canadian IP law. Consequently, the prescribed fee does not align with other jurisdictions nor does it have linkages to international agreements.

Effects on the environment

In accordance with the Cabinet Directive on Strategic Environmental and Economic Assessment, a preliminary scan concluded that a strategic environmental and economic assessment is not required.

Gender-based analysis plus (GBA+)

The TMOB acts on behalf of the Registrar to conduct hearings and render quasi-judicial decisions that either grant, maintain or expunge trademark rights in Canada. The TMOB does not develop public policy; it administers and carries out three types of trademark proceedings in accordance with the requirements set out in the Act and the Regulations. The TIDB administers requests for public notice to be given for official marks in accordance with the Act, Regulations, practice notices and jurisprudence provided by the Federal Court of Canada.

It is not expected the narrow set of regulations contained in the amendments will disproportionally affect any particular groups based on factors such as gender, sex, age, language, education, geography, culture, ethnicity, income, ability, sexual orientation and gender identity.

Implementation, compliance and enforcement, and service standards

Implementation

The amendments come into force on the day on which sections 227 and 228 of the Budget Implementation Act, 2018, No. 2, chapter 27 of the Statutes of Canada, 2018, come into force, but if these amendments are registered after that day, they come into force on the day on which they are registered.

Compliance and enforcement

It is anticipated that affected stakeholders will have sufficient time before the coming-into-force date to familiarize themselves with the regulatory changes and to implement any changes needed to their processes.

As part of the implementation, CIPO will notify stakeholders of the coming-into-force date of the amendments. Outreach will be proactive and conducted via different means, including direct email and social media posts.

To ease the transition, draft practice notices providing guidance on how the TMOB intends to give effect to the amendments to the Act and the amendments to the Regulations have already been published on CIPO’s website. Additionally, CIPO will conduct external training and education and awareness activities to help facilitate understanding of the new requirements, and will develop guidance materials as required. Internal training will also be developed for employees of CIPO.

Service standards

In accordance with the Service Fees Act (SFA), service standards in respect of new fees must be established. Service standards are published on CIPO’s website and subject to remission. The service standards for the new fee is as follows:

The TIDB will track requests that did not meet the service standard using reports generated for this purpose. At the beginning of each month, a report is run to identify the files for which each service standard was not met in the preceding month. A manual verification is done to determine if the unmet request 1) is eligible for a remission based on the SFA, and 2) if yes, the percentage of remission based on the degree to which the service standard was unmet, which can result in a 25% or 50% remission. CIPO tracks all volumes of remissions for the agency and presents the totals in the monthly results as part of the Quality Service Operations Committee Performance Report.

The service standard complies with the requirements of the Policy on Service and Digital and the Directive on Service and Digital and provides clients with a better service experience. In particular, the service (timeliness) standard will support the TIDB existing service improvement initiatives by supporting the reduction of wait times, with the new service standard acting as an improvement driver. This is in line with recent service improvement priorities under the Departmental Plan for Service and Digital, which will be used to monitor and report on the implementation of the service standard as required by this policy and provided for in the Guideline on Service and Digital.

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