As discussed in my short article of July 10, 2024, important changes to the Canadian Trademark Regulations have been proposed. The changes have not yet come into effect and are still subject to change. The consultation period closed on July 8, 2024. In future articles, I will discuss comments that are being debated and next steps in the implementation process.
One set of changes is directed at improving the efficiency of the trademark dispute resolution process. Another set of changes enables the Registrar to inactivate official marks.
In the remainder of this article, I set out some of the details regarding both of these proposed changes.
First, regarding changes to the dispute resolution process, those involve three main elements, namely:
- Cost awards;
- Confidentiality orders; and
- Case management.
Cost cannot presently be awarded in trademark opposition proceedings. The changes would enable the Registrar to order costs to prevent undesirable conduct by the parties. The amendments prescribe fixed-cost awards based on the type of proceeding and the reason for awarding costs, and those awards range (in 2024) between $1,100.00 and $10,400.00. Costs would not be awarded if the proceeding is terminated before a final decision issues.
Presently, all documents filed with the Registrar are publicly accessible. This can cause parties to not file full evidence before the Opposition Board, and to only file that evidence on an appeal to the Federal Court. The proposed changes would allow the Registrar to order, at the request of a party, that certain evidence be kept confidential. The request would need to describe the evidence, state that it has not been publicly disclosed, set out why the information is to be kept confidential, and indicate whether the other party consents to keeping the evidence confidential.
Finally, regarding case management, the proposed changes would allow the Registrar to designate certain proceedings as “case managed”. The Registrar would also have the right to give any direction or make any order to deal with matters efficiently and cost-effectively, and to fix the timeline for any step in a case-managed proceeding, despite the timeline provided under the Trademarks Act.
Second, regarding official marks, we first note that those are unique to Canadian trademark law, and “public authorities” can claim a broad scope of protection through those marks. The requirements for an entity to qualify as a “public authority” have evolved over the years and some owners may no longer qualify as public authorities. Official marks can be cited against an application and, if the applicant provides evidence that the official mark holder no longer exists, the Registrar will withdraw their objection. However, the Registrar does not presently have the authority to cancel an official mark on the basis that its owner is no longer a “public authority”. To do so, a third party must commence an action in the Federal Court. The proposed changes would allow a third party to request that a public notice issue against an official mark. A fee of $325 would be paid and a proceeding before the Opposition Board would take place to determine, for example, whether the holder of an official mark continues to be a public authority or even continues to exist. This procedure would be a cost-effective and efficient way to clear “deadwood”.