By Marie Lussier of Fogler Rubinoff LLP
In July 2024, I discussed proposed changes to trademark proceedings in Canada. Following a public consultation period, revised Regulations came into force on April 1, 2024 that incorporate those proposed changes. The changes aim to improve the efficiency of dispute resolution proceedings in Canada. Time will tell if that goal is achieved but, for now, practitioners and stake holders should be aware of key changes affecting the conduct of opposition proceedings in Canada.
- Costs
The Registrar may not award costs against one party – both in an opposition and in a summary cancellation (S. 45) proceeding. A party can obtain costs whether or not they are successful, but cost awards will only be granted in exceptional circumstances and upon request.
Circumstances that may support a cost award include the following 3 for oppositions – and the latter 2 for summary cancellations:
- Where the opposed application is refused because it was filed in bad faith;
- Where a request for an oral hearing is withdrawn less than 14 days prior; and
- Where one party engages in conduct that causes undue delay or expense.
Before awarding costs, the other party will be given notice and an opportunity to make submissions. The Registrar will provide reasons for their decision and the order may be filed with the Federal Court to then be enforced as an order of the Court.
Cost awards by the Registrar will not be automatically awarded to the successful party and will be nowhere the amount that would be awarded in litigation matters.
- Confidentiality Orders
The Registrar can order that certain evidence filed in an opposition proceeding be kept confidential. That evidence includes affidavits, cross-examination transcripts and undertakings and written representations.
The request for a confidentiality order must be made before the evidence is filed and must (a) describe the evidence, (b) state that the evidence has not been made public, and (3) explain why it should be kept confidential. The other side can comment on the request and, if they breach an order once granted, the Registrar many award costs against them.
- Case Management
The Registrar can now, at any time, designate a proceeding as being “case managed” and can, thereafter, set the time and/or manner for any step to be completed, despite what is specified in the Act or the Regulations.
The Registrar will not use their case management power to deal with substantive issues but more so to coordinate matters involving related files, to schedule a conference call with the parties and to address uncooperative behaviour.
- Evidence on Appeal
Finally, the changes to the Regulations provide that, when appealing a decision of the Opposition Board to the Federal Court, leave of the Court is now required to file new evidence. Previously, new evidence could be filed without leave of the Court.