On Nov. 21, 2022, the Canadian Intellectual Property Office (CIPO) released a notice inviting public consultation on proposed amendments to the Trademarks Regulations and associated draft practice notices and orders[1]. CIPO hopes to provide the Trademarks Opposition Board with tools to discourage undesirable behaviors in proceedings, protect confidential evidence and manage complex cases.

The consultation period began on Nov. 21, 2022 and will end on Feb. 3, 2023.

The proposed amendments are summarized below.

Costs awards

Under the new regulations, costs will only be awarded in exceptional cases in opposition, objection, and section 45 proceedings and require a party to file a request for costs. Costs awards will only be awarded where a decision has been reached. Parties may have a costs award ordered against them even if the circumstances underlying the award were the result of conduct of a predecessor-in-title that was a party to the proceeding.

The following table sets out the proposed grounds for a costs award in the context of opposition, objection, and section 45 proceedings. Also included are the proposed amounts to be awarded for each ground:

Grounds

Availability by proceeding

Quantum

Opposition

Objection

Section 45

Unreasonable conduct causing undue delay, complexity or expense

5 times the prescribed fee to commence the proceeding:

Opposition: $750 x 5 = $3750

Objection: $1000 x 5 = $5000

Section 45: $400 x 5 = $2000

Withdrawal of a request for a hearing less than 2 weeks prior to the scheduled hearing date

2 times the prescribed fee to commence the proceeding:

Opposition: $750 x 2 = $1500

Objection: $1000 x 2 = $2000

Section 45: $400 x 2 = $800

Trademark application is refused on grounds that it was filed in bad faith

N/A

N/A

10 times the prescribed fee to commence the proceeding:

Opposition: $750 x 10 = $7500

A divisional application was filed on or after the day on which the original application is advertised*

N/A

N/A

2 times the prescribed fee to commence the proceeding for each statement of opposition:

Opposition: $750 x 2 = $1500

* Costs not generally awarded where only one divisional application was filed on or after the date of advertisement of the original application.

Confidentiality orders

Under the proposed amendments, parties may file a request for a confidentiality order prior to the submission of the evidence at issue. The test that the Registrar will use to determine whether to grant the confidentiality order is set out in Sierra Club of Canada v Canada (Minister of Finance), 2002 SCC 41 at para 53 and Sherman Estate v Donovan, 2021 SCC 25 at para 38. The test requires the party requesting the order to establish that:

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

While consent of the other party may inform the Registrar’s decision, it is not determinative, and the onus lies with the party seeking it to justify a departure from the open court principle.

Parties that breach a confidentiality order during the course of a proceeding before the Registrar may be subject to a costs award.

Case management

Under the proposed amendments, the Registrar may order a proceeding to continue under case-management where it may be dealt with in a more efficient and cost-saving manner, or where proceedings are more complex and require a heightened level of engagement on the part of the Registrar.

The Registrar may give a direction or order that varies, supplements or dispenses with the application of the Regulations, or fix a time by which or a manner in which a step in the proceedings is to be completed.

Currently, the proposed amendments identify two situations where case management may be warranted:

  1. Where multiple divisional applications have been filed and opposed by the same opponent on similar grounds, consolidation of documents, rulings, and hearing may be warranted; and
  2. Where a substantive amendment is received with respect to a Protocol application after an opposition has commenced and the application is re-advertised, the Registrar may deem certain previously submitted documents during the opposition to have been submitted in respect of the amended Protocol application.

Conclusion

The proposed regulations relating to costs awards will influence strategic considerations in launching opposition, objection or Section 45 proceedings. Those relating to confidentiality and case management will alter the transparency and efficiency of opposition, objection, and section 45 proceedings.

CIPO encourages feedback from businesses, individuals, agents, groups or organizations that have an interest in Canada's trademark regime in general or in proceedings before the Trademarks Opposition Board in particular. Interested parties are strongly encouraged to take part in the consultation process, which is currently ongoing and ends on February 3, 2023.