On June 8, 2024, proposed amendments to Canada’s Trademarks Regulations were published in the Canada Gazette. The public consultation period is open until July 8, 2024, and comments will be posted on the Canada Gazette website following the end of the consultation period.
A coming-into-force date has not yet been set but the Canadian Intellectual Property Office indicates that sufficient time will be provided to ease the transition.
The proposed amendments to the Regulations, when combined with earlier amendments to the Trademarks Act provided for under Bill C-86 (adopted in 2018 but not yet in force), would affect the conduct of contentious trademark proceedings in Canada and provide a process to challenge official marks.
The overall goal is to improve the efficiency of the trademark dispute resolution process in Canada by allowing the Registrar of Trademarks to (a) case manage proceedings, (b) award costs, and (c) issue confidentiality orders.
The Registrar could also administratively inactivate official marks in certain circumstances. Owners of such marks should now consider whether they still meet the requirements to qualify as a “public authority” and, if in doubt, consider protecting those marks as regular marks.
In my next article, I will elaborate on each of the proposed changes and how they might affect the conduct of proceedings and the rights of parties before the Canadian Intellectual Property Office.