Trademarks Regulations: Costs, Confidentiality, Case Management

Summary#

This is a proposed change to the Trademarks Regulations published on June 8, 2024. It would give the Canadian Intellectual Property Office new tools — like fixed cost awards, confidentiality orders, stronger case management, and a fee to ask the Registrar to say an official mark no longer applies — to speed up trademark disputes and limit wasteful behaviour. Interested people have 30 days to comment.

What it does#

• Costs awards

  • Lets the Registrar of Trademarks award fixed-cost amounts against a party in certain proceedings (oppositions, expungements, objections) when specific problems occur, for example:
    • If an application is refused because it was filed in bad faith: award equal to ten times the filing-fee multiplier (example monetized amount in the document: $10,400 for an opposition).
    • If someone files a divisional application after the original is advertised: award equal to two times that fee (example: $2,080).
    • If a party withdraws a hearing request less than 14 days before the scheduled hearing: award equal to two times the relevant filing fee (examples: $2,080, $1,110, $2,774 depending on proceeding).
    • If a party engages in unreasonable conduct that causes undue delay or expense: award equal to five times the relevant filing fee (examples: $5,200, $2,775, $6,935).
  • Requests for costs must be made online and are time-limited. The Registrar will notify the other party and consider written responses.

• Confidentiality orders

  • Allows a party in a TMOB proceeding to ask the Registrar to keep particular evidence confidential.
  • The request must explain what is to be kept private, why, whether the other side agrees, and any other required details.
  • The Registrar must weigh the public interest in open proceedings when deciding.

• Case management

  • Gives the Registrar power to actively manage complex or related cases.
  • The Registrar can designate a file as “case-managed,” set deadlines, consolidate related files, and change how steps are completed to save time and costs.
  • Factors for designation include complexity, related files, representation, and delays.

• Official marks (public notice)

  • Creates a simple, fee-based process for asking the Registrar to publish that the protection tied to an official mark no longer applies in certain cases (for example if the mark-holder is not a public authority or no longer exists).
  • The proposed fees in the schedule are $694.00 for a request under one item and $325.00 for a related notice item.

Who's affected#

• Trademark applicants and owners. They may face fixed cost awards in some disputes and can use the new tools to challenge official marks more cheaply.
• Opponents and parties in TMOB proceedings (those who bring or defend oppositions, expungements and objections).
• Lawyers and agents who represent clients in trademark disputes — the rules change how requests and responses are made and may increase some short-term drafting work (the document estimates some legal-billing impacts, e.g. annualized amounts like $19,256 and $55,017 for different kinds of filings).
• Trademarks Opposition Board (TMOB) and Trademarks and Industrial Designs Branch (TIDB) inside CIPO — the agency expects to spend staff time and IT resources to implement the changes (estimated IT set-up annualized cost $118,825, and other employee-cost estimates such as $3,071, $9,829, $48,610 are in the analysis).
• Small businesses in particular — the changes aim to protect them from abusive or delaying tactics, though there may be modest new costs (the analysis projects an annualized total stakeholder impact of $345,133).

If it’s unclear who will feel a change in a particular case, the source notes that specific effects will depend on the facts of each proceeding.

Why it matters#

• Speeds up trademark disputes: fixed cost penalties and active case management are intended to discourage delay and repetitive tactics. That can cut time and legal expense for parties and free up TMOB resources.
• Lets parties submit sensitive evidence: confidentiality orders mean businesses can present commercially sensitive information without full public disclosure, which may lead to more complete records and fairer decisions.
• Makes it easier and cheaper to clear unused official marks: a paid notice process aims to remove “deadwood” official marks that block others from registering and using trademarks.
• Small businesses may benefit from fewer costly delays and simpler ways to overcome official-mark objections, though some new fees and modest legal/administrative costs will apply.
• These are proposed regulations, not yet in force. Their actual start date depends on when related sections of the Budget Implementation Act, 2018, No. 2 come into force (the text ties the regulations’ coming-into-force to sections 227 and 228 of that Act).