Trademarks Regulations: costs, confidentiality, case management

Summary#

These are proposed changes called the Regulations Amending the Trademarks Regulations. They would give the Canadian Intellectual Property Office (CIPO) new tools—costs awards, confidentiality orders, and case management—and set small fees for a new official-marks notice process. The proposal was published on June 8, 2024 and is open for comment for 30 days after publication.

What it does#

• Costs awards

  • Allows the Registrar to order a fixed cash payment against a party in certain trademark proceedings (oppositions, expungements, objections) when a party behaves badly or causes extra delay or expense.
  • Examples of the fixed amounts (based on existing filing fees): opposition refused for bad faith — $10,400; unreasonable conduct in an opposition — $5,200; filing a divisional after advertising — $2,080. (Smaller or different amounts apply in expungement and objection proceedings.)
  • Requests for costs must be filed online and are time-limited; the Registrar cannot award costs on their own initiative.

• Confidentiality orders

  • Allows parties in TMOB proceedings to ask the Registrar to keep particular evidence private (for example commercially sensitive documents).
  • Requests must describe the evidence, confirm it is not public, explain why secrecy is needed, and say whether the other party agrees.
  • The Registrar must balance confidentiality requests against the public interest in open proceedings.

• Case management

  • Gives the Registrar explicit authority to manage proceedings more actively (set timelines, consolidate related files, and tailor steps to be efficient and fair).
  • A case can be designated as “case-managed” if it meets criteria like complexity, number of related files, or expected delay.

• Official marks and fee

  • Creates a quicker way to get public notice that an official mark’s prohibition no longer applies when the mark holder is not a public authority or has ceased to exist.
  • Sets the fee for that request at $694.00, and a related notice fee at $325.00.
  • The rule ties the coming-into-force of these Regulations to provisions in the Budget Implementation Act, 2018.

Who's affected#

• Trademark applicants and people or businesses who oppose trademark registrations. They will see the biggest direct effects.
• Small businesses and other rights-holders who may face fewer abusive or time-wasting oppositions, or who want to submit confidential evidence without making it public.
• Lawyers, agents and other representatives who handle trademark disputes (they may need to prepare new types of requests and submissions).
• The Trademarks Opposition Board (TMOB) and other parts of CIPO, which will implement and use these new tools.
• Holders of official marks (including public authorities) may be affected if someone requests notice that the prohibition no longer applies.

If any part of who is affected is unclear from the proposal, that is because some details (for example how often costs will be awarded in practice) depend on future decisions and case-by-case use of the new powers.

Why it matters#

• These changes aim to speed up trademark disputes and reduce wasteful or abusive tactics by letting the Registrar impose predictable monetary penalties in set situations.
• Allowing confidentiality orders can let businesses provide full, sensitive evidence to the TMOB without exposing trade secrets or personal data publicly.
• Stronger case management should shorten timelines for complex or related cases, saving time and money for both small and large parties.
• The official-mark notice process gives businesses a cheaper and quicker alternative to court to clear blocking official marks that are no longer relevant.
• There are some new administrative costs (fees and time to prepare requests), but the government says overall the changes should make the system more efficient. These are proposals and not final rules yet; comments were invited for 30 days after June 8, 2024.