In brief

Starting 1 April 2025, amendments to the Canadian Trademarks Act and its accompanying regulations will come into force. They will impact adversarial proceedings before the Trademarks Opposition Board (TMOB) and the Federal Court of Canada.

With respect to TMOB proceedings, parties will now be able to do the following:

  • Request a confidentiality order in opposition, cancellation or objection proceedings to prevent sensitive evidence from being filed in the public record
  • Request a costs award against another party at the TMOB for filing a trademark application in bad faith, acting unreasonably during a proceeding, withdrawing a hearing request within 14 days of the hearing and filing a divisional to force multiple opposition proceedings
  • Have certain proceedings case-managed by the TMOB

With respect to Federal Court proceedings, the following changes have been introduced: •

  • Parties will now need to show use in trademark infringement proceedings if their registration was obtained less than three years ago.
  • Parties will now no longer have the automatic right to file additional evidence when appealing the registrar's decisions at the Federal Court.

Lastly, parties will also have the opportunity to challenge official marks before the registrar without having to seek relief from the Federal Court.

The main point is that there will be significant changes to contentious trademark proceedings in Canada starting 1 April 2025. Most notably, parties that engage in undesirable conduct in adversarial proceedings could face significant costs awards at the TMOB (potentially over CAD 10,000 in some cases). Furthermore, confidentiality orders will give companies the chance to be more persuasive in opposition and cancellation proceedings by allowing them to file sensitive evidence without having it publicly disclosed.

Key takeaways

Companies involved in adversarial proceedings before the TMOB and the Federal Court of Canada should be aware that the following will apply as of 1 April 2025:

1. They can request a confidentiality order at the TMOB to prevent sensitive evidence from being disclosed in the public record.

2. They may have costs awarded against them at the TMOB if they file a trademark application in bad faith, act unreasonably during a proceeding, withdraw a hearing request 14 days before the hearing or divide a trademark application after advertisement to force multiple oppositions.

3. They will need to show use when suing for trademark infringement at the Federal Court of Canada if their registration was obtained less than three years ago.

4. They will no longer have an automatic right to file additional evidence when appealing the registrar's decisions at the Federal Court.

5. They can request to challenge official marks for a modest fee of CAD 325.

In depth

Five main categories of amendments to the Trademarks Act and regulations will be introduced on 1 April 2025.

Costs awards at the TMOB

Parties may now request that costs be awarded against another party in an opposition, cancellation or objection proceeding in the following amounts:

• Where a party's trademark application is refused for bad faith in an opposition proceeding, costs of 10 times the fee for filing a statement of opposition (CAD 10,857.60 as of 2025)

• Where a party divides their trademark application after the original application is advertised resulting in multiple opposition proceedings, costs of two times the fee for filing a statement of opposition (CAD 2,171.52 as of 2025)

• Where a party withdraws a hearing request less than 14 days before the hearing:

• In opposition proceedings, costs of two times the fee for filing a statement of opposition (CAD 2,171.52 as of 2025)

• In cancellation proceedings, costs of two times the fee for filing a cancellation notice (CAD 1,158.84 as of 2025)

• In objection proceedings to geographical indications, costs of two times the fee for filing a statement of objection (CAD 2,896.06 as of 2025)

• Where a party acts unreasonably, causing undue delay or expense:

• In opposition proceedings, costs of five times the fee for filing a statement of opposition (CAD 5,428.80 as of 2025)

• In cancellation proceedings, costs of five times the fee for filing a cancellation notice (CAD 2,897.10 as of 2025)

• In objection proceedings to geographical indications, costs of five times the fee for filing a statement of objection (CAD 7,240.15 as of 2025)

Costs awards will only apply if the above behavior occurs after 1 April 2025.

If a party seeks costs, they must file a request within 14 days of the hearing or after the one-month period for filing a request for hearing ends. Their request must provide reasons and the details of the circumstances for which costs are sought. The registrar will then give notice to the other party, which will then have 14 days to respond with written representations.

The TMOB will release a practice notice that will provide more information about costs awards, including examples of behaviour that constitutes unreasonable conduct.

Confidentiality orders at the TMOB

Parties have often avoided filing sensitive information with the TMOB for fear of public disclosure. The introduction of confidentiality orders should encourage companies to file more complete and relevant evidence during adversarial proceedings. That said, the registrar has clarified that the confidentiality orders are intended to be exceptional because they involve a significant departure from the open court principle. The registrar still believes that, for most proceedings, redacting documents or describing evidence broadly, for example, yearly sales of over CAD 1 million, remains sufficient for just determination.

To request a confidentiality order, a party will be required to file a request with the TMOB prior to filing the evidence at issue. The party will also be allowed to request a one-month extension of time from the date of the confidentiality order to submit and serve their evidence. The request for a confidentiality order must contain the following information:

• A description of the evidence that the party would like to be kept confidential (e.g., personal medical information, terms of a settlement agreement, internal marketing plans)

• A statement that the evidence has not been made public

• Reasons why the evidence should be kept confidential

• An indication of whether the other party consents to the request

• Any other information that the registrar requires to make a decision on the request

Based on the information provided, the registrar will then decide whether to grant the confidentiality order based on the open court principle, which values public interest in open and accessible proceedings by applying the three principles articulated by the Supreme Court of Canada in Sierra Club v. Canada (Minister of Finance), 2002 SCC 41. These are as follows:

• Court openness poses a serious risk to an important public interest (e.g., public interest in fair competition or preserving human dignity).

• The order sought is necessary to prevent that risk because reasonably alternative measures will not prevent the risk (e.g., whether redacting information in the documents at issue would be a reasonable alternative to a confidentiality order).

• The benefits of the order outweigh its negative effects.

Furthermore, the regulations state that the registrar may amend or revoke the confidentiality order if it is no longer satisfied that the evidence should be kept confidential. However, the regulations do not specify what it meant by "no longer satisfied that the evidence should be kept confidential."

The TMOB is will release a practice notice and model confidentiality order that will provide more information about the legal test that the registrar will apply when considering these requests. The model order contemplates that the parties, their counsel and the TMOB will have access to the confidential information and that the information will only be used for the purposes of the proceeding.

Currently, these confidentiality orders only apply to opposition, cancellation or objection proceedings to geographical indications and not to filing evidence of acquired distinctiveness, despite the fact that a similar type of sensitive information is often filed.

Federal Court of Canada proceedings

Parties that sue for trademark infringement at the Federal Court of Canada will now be required to show use of their registration if they obtained their registration less than three years ago. This provision ensures that registered trademark owners use their trademarks in the Canadian marketplace before attempting to enforce their registered rights in court. It also reinforces that "use" is the foundation of the Canadian trademark law system.

Secondly, parties will no longer have the automatic right to file additional evidence when appealing the registrar's decisions at the Federal Court. Prior to introducing confidentiality orders at the TMOB (as mentioned above), parties tended to introduce additional evidence at the Federal Court on appeal where confidential evidence could be kept under seal. With the introduction of confidentiality orders at the TMOB, parties will now have the chance to put their best foot forward at first instance, which will hopefully reduce the need to file additional evidence on appeal.

Challenging official marks

Previously, the only way to challenge official marks was before the Federal Court of Canada. Parties will now be able challenge official marks for a modest fee (CAD 325 as of 2025) by requesting that the registrar give public notice that it is no longer prohibited to adopt or use certain official marks because the mark holder isn't a public authority or no longer exists.

These amendments are not intended to create an adversarial proceeding between the requesting party and the official mark holder. However, the registrar will consider information provided by the requesting party in determining whether notice should be sent to the official mark holder to request evidence of its public authority status.

Case management at the TMOB

Lastly, case management will now be available at the TMOB, which should promote greater efficiency and cost-effective resolution of cases. Although the registrar ultimately determines whether case management will be employed in an opposition, cancellation or objection proceeding, the parties may write to the registrar to bring to its attention a situation that may warrant case management. The TMOB will now be able to do the following, among other things:

• Extend deadlines to align multiple related proceedings

• Hear related files together or consecutively

• Convene a conference call with the parties to address issues efficiently (e.g., addressing requests for accommodation at a hearing or the method of filing and serving evidence containing confidential information)

• Convene a conference call with the parties to address the scheduling and conduct of hearings, including hearings implicating multiple related proceedings, hearings with exceptionally voluminous or complicated records, hearings where confidential information will be discussed or hearings where there are outstanding issues to resolve with respect to attendance

• Address uncooperative behavior that could potentially delay a proceeding (e.g., if a party is unresponsive with respect to providing available dates for cross-examination)

The TMOB will release a practice notice that will provide more information explaining how case management will be conducted. More information about all of these amendments can be found here:

• https://gazette.gc.ca/rp-pr/p2/2025/2025-02-26/html/si-tr12-eng.html

• https://laws-lois.justice.gc.ca/eng/acts/t-13/page-9.html#docCont