Effective April 1, 2025, three significant changes will be coming to Canadian trademark opposition practice.
First, the Registrar will have the ability to award costs against the unsuccessful party.
Second, the Registrar will have the ability to issue confidentiality orders.
Third, the Registrar will have the ability to case manage oppositions.
Costs
The Registrar may, if requested, award costs against a party to an opposition or summary cancellation non-use (s. 45) proceeding in specific circumstances, regardless of whether that party is successful, wholly or partially, in the proceeding. However, costs awards will only be awarded in exceptional cases and only when requested by a party.
A request for costs must specify the reasons for the request and the circumstances for which costs are sought. In an opposition the Registrar may award costs:
- where the party's application is refused on the ground that it was filed in bad faith;
- where the party withdraws a request for a hearing less than 14 days before the day on which the hearing is scheduled to take place; or
- where the party engages in unreasonable conduct that causes undue delay or expense.
In s. 45 proceeding, the Registrar may only award in the latter two cases.
The Registrar has provided the following non-exhaustive list of examples of conduct that may be considered to be unreasonable causing undue delay or expense:
- Failing to attend a hearing that a party has requested without informing the Opposition Board;
- Failing to attend a cross-examination that a party has requested without informing the other party or cancelling a cross-examination on short notice without consent;
- Failing to follow a case management order or direction;
- Breaching a confidentiality order;
- Not cooperating with the other party for scheduling of cross-examination;
- A course of conduct necessitating unnecessary adjournments or delays;
- Pursuing a ground of opposition that has no reasonable chance of success;
- Acting disrespectfully or maligning the character of another party.
The Registrar will give the other party notice of the request for costs and an opportunity to make written representations in response.
The Registrar will provide reasons for its decision on costs. An order for costs may be filed in the Federal Court at which point it becomes and may be enforced as an order of that Court.
It should be borne in mind that, while the Registrar will have the ability to award costs: (1) costs will not be awarded presumptively to the successful party as would be the case in litigation; and (2) the amount of such costs will be modest and will be nowhere near the scale of costs which are often awarded in litigation matters to the successful party.
Confidentiality Orders
As a general rule, all documents relating to trademark proceedings and hearings are public.
Notwithstanding, the Registrar may now order that some parts of the information contained in evidence be kept confidential. A confidentiality order could apply to any document including evidence, cross-examination transcripts and undertakings and written representations.
The Registrar will view confidentiality orders as exceptional. The Registrar is of the view that for most proceedings, redacting documents or describing evidence broadly, for example, yearly sales of over $1 million, is sufficient.
A party may make a request that some or all of the evidence that they intend to submit to the Registrar be kept confidential. However, the Registrar will not consider requests to keep a statement of opposition, a counter statement, or part of a statement of opposition or a counter statement confidential.
A request to keep some or all of the evidence confidential must be made prior to submitting the evidence at issue. The request must specify, among other things
- a description of the evidence that a party wishes to be kept confidential;
- a statement that the evidence has not been made public;
- the reasons why the evidence should be kept confidential;
- an indication of whether the other party either consents to the request; and
- any other information that the Registrar requires.
Where the other party does not consent to or does not object to the request, the Registrar will ask the other party for its comments.
In deciding whether to make a confidentiality order, the Registrar must consider the public interest in open and accessible proceedings and the test for issuing a confidentiality order, as articulated by the Supreme Court of Canada, which is a reasonably high threshold to meet.
In certain circumstances, the Registrar may require both a public and confidential version of documents to be filed with it, in a manner similar to that which exists in Court filings with confidentiality orders. A certified copy of the Registrar's confidentiality order may be filed in the Federal Court at which point he order becomes and may be enforced as an order of that Court
If a party breaches the confidentiality order during the course of a proceeding, the Registrar may award costs against that party. That a confidentiality order can also be enforced as an Order of the Federal Court also raises the possibility of sanctions from the Court for breach.
Case Management
The Registrar will now have the ability to give any direction or make any order to deal with a proceeding as the circumstances and considerations of fairness permit.
The Registrar may, at any time designate the proceeding as a case-managed proceeding and will then have considerable flexibility to tailor the case-manage proceeding, including the authority to fix the time by which or the manner in which any step is to be completed, despite any time or manner provided for in the provisions of the Act or of the Regulations.
Case management will be employed in situations, including the following:
- extending deadlines to align multiple related proceedings;
- scheduling hearings for related files together or consecutively;
- convening a conference call with the parties to address issues efficiently, the scheduling and conduct of hearings; and/or
- addressing uncooperative behaviour that could potentially delay a proceeding.
The Registrar will advise the parties in writing when the Registrar determines that case management will be employed or when a proceeding will continue as a case-managed proceeding.
The Registrar will not use its case management powers to deal with substantive matters, like making interlocutory rulings.
In determining whether to designate a proceeding as a case-managed proceeding, the Registrar must consider all the surrounding circumstances, including:
- the extent of intervention by the Registrar that the proceeding is likely to require;
- the nature and extent of evidence;
- the complexity of the proceeding;
- whether the parties are represented;
- the number of related files; and
- whether substantial delay has occurred or is anticipated to occur in the conduct of the proceeding.
In summary, many of the new powers which the Registrar will have effective April 1 will bring adversarial proceedings before it more in line with similar Court proceedings. It remains to be seen to what extent such new powers will be exercised in practice.
Summary By: Gary Daniel
