Long-awaited proposed amendments to Canada’s Trademarks Regulations were recently published in the Canada Gazette (https://www.gazette.gc.ca/rp-pr/p1/2024/2024-06-08/html/reg5-eng.html). The consultation is now open, and interested parties have until July 8, 2024 to provide their comments and suggestions (https://ised-isde.canada.ca/site/canadian-intellectual-property-office/en/canadian-intellectual-property-statistics).
The proposed amendments to the Trademark Regulations aim to allow proceedings before the Trademarks Opposition Board (TMOB) to be carried out more efficiently, to discourage undesirable behaviours including those that cause undue delay and expense, and to introduce a new way to challenge official marks at a lower cost than having to go to the Federal Court. The amendments follow several prior consultations, and are required to implement legislative changes introduced in 2018, which provided authority for the Registrar of Trademarks to:
- case manage proceedings. Presently case management is not available to help efficiently and cost-effectively advance trademark proceedings in Canada. The proposed amendments are intended to foster faster, more efficient, proceedings, and avoid duplication of effort, including proceedings against related applications or registrations. For example, the Registrar would be entitled to give any direction or make any order to deal with matters in a proceeding in a fair, efficient and cost-effective manner. Where surrounding circumstances warrant, the Registrar may also designate a proceeding as a case-management proceeding for heightened and ongoing direction. The Registrar would be permitted to consolidate proceedings, shorten deadlines, and deem documents to be submitted in multiple cases, for example.
- award costs against a party to a proceeding. Presently there is no such mechanism to discourage and curtail undesirable and inefficient behaviours in trademark proceedings. The proposed amendments would allow the TMOB to award costs in fixed amounts in certain cases, such as: (a) if a trademark application is successfully opposed on the ground that it was filed in bad faith; or (b) if a party is found to have engaged in unreasonable conduct which causes undue delay or expense in an opposition or expungement proceeding. Cost awards would be calculated as a multiple of the fees for initiating the proceeding. Notably, the proposed amendments will not allow the TMOB to award costs if a proceeding ends before a final decision is issued, and a general policy of awarding costs to the winning party has not been adopted. Further, the Registrar would not award costs on its own initiative.
- issue confidentiality orders: Presently the Trademarks Act mandates public availability of all documents, consistent with the open courts principle, so commercially sensitive or personal information cannot be protected from public disclosure in trademark proceedings. This is now an issue of even graver concern since the Canadian Intellectual Property Office (CIPO) has rolled out the Trademarks Document Retrieval Service, which allows online access to correspondence submitted by and to CIPO. The proposed amendments specify the particulars to be detailed when seeking a confidentiality order, and provide that, in considering a request for a confidentiality order, the Registrar must consider the public interest in open and accessible proceedings.
- give public notice that the prohibition to adopt or use a particular official mark no longer applies. Official marks are a type of prohibited mark that remain on the Register indefinitely, which can be a serious barrier to registration in Canada. Presently, official marks may only be challenged in Federal Court, and otherwise, there is no simple mechanism to remove official marks that are “deadwood” from the Register. The proposed amendments provide for proceedings before the TMOB to challenge official marks.The proposed amendments would establish a fee of $325 to request public notice that, for example, the holder of an official mark is not a public authority or has ceased to exist. The mechanism would provide Canadian trademark applicants with a more efficient and cost-effective manner to challenge official marks that are “deadwood” obstacles to registration.
No coming-into-force date has yet to be set for the proposed amendments, but CIPO has indicated that they will provide sufficient time and draft practice notices to ease the transition.
