On November 21, 2022, the Canadian Intellectual Property Office (CIPO) launched a public consultation on proposed amendments to the Trademarks Regulations (the Proposed Regulations), and draft practice notices.  The Proposed Regulations and draft practice notices will implement changes that were made to the Trademarks Act in 2018, which granted the Registrar of Trademarks (the Registrar) the authority to award costs, grant confidentiality orders, and practice case management in opposition, objection and non-use cancellation (section 45) proceedings.

According to the consultation document, the Proposed Regulations and draft practice notices are intended to provide the Registrar “with the tools needed to discourage undesirable behaviors in proceedings, protect confidential evidence and manage complex cases.”

With respect to cost awards, the Proposed Regulations and draft practice notice set out that the Registrar may, only at the request of a party, award costs in specific circumstances, such as when an application is refused on the ground that it was filed in bad faith, when a party engages in unreasonable conduct, or when a party cancels a hearing less than two weeks prior to the scheduled hearing date.  The proposed amounts range from two to ten times the prescribed fee to commence the proceeding.

The Proposed Regulations and draft practice notices also outline the mechanism by which a party may request a confidentiality order relating to evidence it intends to file.  The draft practice notice includes the test for granting a confidentiality order, and a model order.

With respect to case management, the Proposed Regulations allow the Registrar to give a direction or make an order that would supplement the Regulations where matters need to be dealt with in a more efficient and cost-saving manner, and order that certain complex matters proceed as a case-managed proceeding.  The draft practice notice states that the Registrar has “considerable flexibility to tailor” a case-managed proceeding, including adjusting deadlines set out in the Act.

The Proposed Regulations and draft practice notices are open for consultation until February 3, 2023, and further information on how to participate can be found here.

Summary By: Michelle Noonan


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