What Do You Think? CIPO Proposes Amendments To Trademark Regulations

On June 8, 2024, the Canadian Intellectual Property Office (CIPO) launched a consultation on proposed amendments (the Amendments) to the Trademarks Regulations (the Regulations), which are intended to increase the efficiency of proceedings before the Trademarks Opposition Board (TMOB) and discourage certain undesirable behaviours.

The Amendments address four main areas:

1. Cost Awards. The Amendments would implement a costs awards regime for proceedings before the TMOB in order to disincentivize undesirable behaviours and efficiently advance proceedings. At the request of a party, the Registrar of Trademarks (the Registrar) may award costs in fixed amounts against the other party in certain circumstances.
2. Confidentiality Orders. A party may request a confidentiality order in a proceeding before the TMOB, enabling the filing of confidential information in such proceedings and a more complete evidentiary record. The party requesting a confidentiality order must: (i) describe the evidence to be kept confidential; (ii) provide a statement that the evidence has not been made public; (iii) explain why the evidence should be kept confidential; (iv) indicate whether the other party in the proceeding consents to the request; and (v) provide any other information required by the Registrar.
3. Case Management. The Amendments clarify the use of case management in certain proceedings by allowing the Registrar to (i) give any direction or make any order to deal with matters in an efficient and cost-effective manner, as considerations of fairness permit; (ii) at any time, designate a proceeding as a case-managed proceeding; and (iii) give a direction or make an order fixing the timeline for any step in a case-managed proceeding, despite any timeline provided under the Trademarks Act.
4. Official Marks. The Amendments are intended to provide a simple and cost-effective way to challenge official marks at a lower cost than going to court. They would give the Registrar authority, on its own initiative or at the request of a person who has paid a prescribed fee, to provide public notice that the provision related to official marks does not apply to a specific mark (e.g., where the mark holder is not a public authority or has ceased to exist).

CIPO’s consultation remains open until July 8, 2024, and more information can be found here.

Summary By: Amy Ariganello