Trademarks Rules: Costs, Confidentiality, Case Management

Summary#

These are proposed changes called the Regulations Amending the Trademarks Regulations. They would give new powers to the trademark office to award fixed costs in some disputes, to order parts of evidence kept confidential, to case-manage complex files, and to set fees for asking the Registrar to say an official mark no longer blocks a trademark. This is a proposal (not law yet) published on June 8, 2024 with a 30‑day comment period.

What it does#

• Costs awards

  • Lets the Registrar and the Trademarks Opposition Board (TMOB) award fixed amounts of costs in certain situations instead of leaving each party to pay its own bills.
  • Examples of the fixed amounts (tied to existing filing-fee levels):
    • If an application is found to be filed in bad faith: $10,400 (opposition only).
    • If a divisional application is filed after the original is advertised: $2,080 (opposition only).
    • If a party withdraws a hearing less than 14 days before it starts: $2,080 (opposition), $1,110 (expungement), $2,774 (objection).
    • For “unreasonable conduct” that causes delay or extra expense: $5,200 (opposition), $2,775 (expungement), $6,935 (objection).
  • Requests for costs must be filed using the designated online service and generally within 14 days of the end of a hearing or other specified deadlines.

• Confidentiality orders

  • Allows a party in an opposition, expungement, or objection to ask the Registrar to keep specific evidence confidential.
  • A request must describe the evidence, say it hasn’t been made public, explain why confidentiality is needed, say whether the other party agrees, and provide any other required details.
  • The Registrar must weigh the request against the public interest in open proceedings and can grant, amend, or revoke orders during a case.

• Case management

  • Gives the Registrar explicit authority to make directions and orders to run proceedings efficiently.
  • The Registrar may designate a file as “case‑managed” and then set or change timing and steps for that file (for example, consolidate related files or shorten deadlines).
  • The Registrar will consider factors like complexity, number of related files, representation, evidence, and delays when deciding this.

• Official marks and fees

  • Adds or sets fees for asking the Registrar to give public notice that the official‑mark prohibition does not apply to a particular mark.
  • Fees in the schedule: $694.00 for a request under paragraph 9(1)(n) or (n.1); $325.00 for a request under subsection 9(4).
  • CIPO aims to process such requests within 12 weeks once they are complete.

Who's affected#

• Trademark applicants and owners who face oppositions or objections.
• Parties that bring oppositions, expungements, or objections (including small businesses and individual owners).
• Agents and lawyers who represent trademark parties (they will prepare requests for costs or confidentiality orders).
• Canadian Intellectual Property Office (CIPO), including the Trademarks Opposition Board (TMOB) and the Trademarks and Industrial Designs Branch (TIDB) — they will administer the new powers and fees.
• It is unclear if there are other groups who might be affected beyond the trademark system; the proposal says modern treaties and Indigenous interests were assessed and no impacts were identified.

Why it matters#

• Speeds up some trademark disputes. Fixed cost penalties and active case management are intended to discourage delay and unnecessary steps. That can save time and money for both small and large parties.
• Lets parties submit sensitive commercial or personal evidence to the TMOB without full public disclosure, which can lead to fuller records and fairer decisions.
• Makes it easier and cheaper to challenge obsolete “official marks” that block trademark use. That could free up names and symbols for businesses to use or register sooner.
• Adds financial risk for parties that behave poorly in proceedings. In some cases a party could face an immediate, fixed bill like $10,400 rather than only paying its own legal costs.
• This is a proposed regulation. It would come into force only when the related sections of the Budget Implementation Act, 2018 come into force (or when the regulations are registered). Comments were invited for 30 days after publication on June 8, 2024.