Upcoming changes to Canada’s trademarks regime: what brand owners and their counsel need to know

On April 1, 2025, long-awaited amendments to Canada’s Trademarks Act and Trademarks Regulations will come into force. The purpose of the amendments is to discourage abuse of Canada’s trademarks regime and to improve the efficiency of proceedings before the Trademarks Opposition Board (TMOB) at the Canadian Intellectual Property Office (CIPO).

Proof of use will be required to obtain relief in Court proceedings

Subsection 53.2(1) of the Trademarks Act empowers both federal and provincial Courts to grant “any order … appropriate in the circumstances” if they are satisfied that a cause of action has been made out under the Act.

As of April 1, 2025, section 53.2 will be amended significantly. Currently, a trademark registration may not be cancelled for non-use within the three-year period immediately following registration, allowing owners of newly registered marks to seek and obtain injunctive relief, relying on rights in marks that may not have yet been used in Canada.

A new subsection to section 53.2 will require owners of trademark registrations that are less than three years old to demonstrate “use in Canada” or “special circumstances” excusing non-use before federal and provincial Courts will award them any relief. The new subsection reads:

Exception

(1.‍1) If, within a period of three years beginning on the date of registration of a trademark, the owner of the registered trademark makes an application claiming that an act has been done contrary to section 19, 20 or 22, the owner is not entitled to relief unless the trademark was in use in Canada at any time during that period or special circumstances exist that excuse the absence of use in Canada during that period.

The purpose of the new subsection is to prevent unscrupulous “rightsholders” from obtaining relief based on registrations of marks that they have not in fact used, such as “trademark trolls” that have no bona fide interest in their newly registered marks.

It remains to be seen how the Courts will interpret this new subsection. Notably, it is currently unclear as to the extent of use required and whether the mark must be in use in Canada in association with the “relevant” goods/services (i.e., those related to the particular allegations) or simply any goods/services listed in the relied-upon registration.

Official marks will be vulnerable to challenge

Official marks are often viewed as “super-marks” under the Trademarks Act. They are any “badge, crest, emblem or mark” that has been “adopted and used” by a public authority in Canada, and in respect of which the Registrar of Trademarks (Registrar) has given public notice of that adoption and use by way of publication in the Trademarks Journal. Only public authorities may hold such marks, which may cover all goods and services in all classes. Once public notice is given, third parties are prohibited under the Act from adopting “in connection with a business, as a trademark or otherwise, any mark consisting of, or so nearly resembling as to be likely mistaken for” the official mark – unless they have consent from the official mark holder. Accordingly, if a trademark Examiner cites an official mark against a pending trademark application during prosecution, the applicant may need to obtain the consent of the official mark holder to overcome the Examiner’s objection. 

Historically, it has been very difficult to challenge or invalidate official marks – until now.

As of April 1, 2025, if the official mark holder is not in fact a public authority or no longer exists, new provisions to the Act and Regulations empower the Registrar to give public notice that the prohibitions on the adoption and use of its official mark(s) no longer apply. The Registrar can do so on their own initiative or on receipt of a request and payment of a prescribed fee ($325 CAD) from any person.

For aspiring trademark owners, these changes have the potential to simplify the path to use and registration where an official mark holder is not a public authority or no longer exists.

In advance of April 1, 2025, official mark holders would be well advised to review their portfolio and consider whether their rights and status as a “public authority” may be vulnerable to challenge. If so, they may wish to file new applications for ordinary trademarks, to preserve their rights.

The Registrar of Trademarks will have new powers in TMOB proceedings

The amendments will also empower the Registrar to award costs, issue confidentiality orders, and order case management in objection proceedings under section 11.13, opposition proceedings under section 38 and cancellation proceedings under section 45 of the Act.

Cost awards

Cost awards are currently unavailable in TMOB proceedings, with neither party recouping the often-significant costs of such proceedings.

However, as of April 1, 2025, the Registrar may award costs, but only in exceptional circumstances and upon request by the parties, who must explain why costs are warranted. Such awards are not intended to compensate the parties for their incurred costs, but to curb undesirable, unreasonable or vexatious behaviour or conduct in TMOB proceedings. The relevant Practice Notice published by the CIPO suggests that such behaviour or conduct may include:

• if an application for the registration of a trademark is refused with respect to one or more of the goods or services on the ground that it was filed in bad faith;
• if a divisional application was filed on or after the day on which the original application is advertised under subsection 37(1) of the Act, such that an opponent must commence more than one opposition proceeding in order to oppose the registration of the mark in association with all the goods and services;
• if a party who filed a request for a hearing withdraws their request for a hearing less than two weeks prior to the scheduled hearing date; and
• if a party engages in unreasonable conduct that causes undue delay, complexity or expense in a proceeding.

Notably, the Registrar’s power to award costs is not retroactive; the allegedly undesirable, unreasonable or vexatious behaviour or conduct must have occurred after April 1, 2025 before the Registrar will award costs. The Registrar may direct by which party and to which party costs are to be paid and specify that costs will not be awarded for proceedings that do not reach a decision. Furthermore, an award of costs does not depend upon the result of the proceeding; for example, a “losing” party may be entitled to a cost award if the “winning” party engaged in undesirable, unreasonable or vexatious behaviour or conduct in the course of the proceeding.

The quantum of costs is also prescribed by the amendments to the Regulations, and will depend on the circumstances that warrant an award of costs. Cost awards are multiples of the prescribed fee to commence a given proceeding, and range from two times the prescribed fee to ten times the prescribed fee, depending on the circumstances. For example:

• if an application for the registration of a trademark is refused with respect to one or more of the goods or services on the ground that it was filed in bad faith, the opponent is entitled to a cost award equal to ten times the prescribed fee for filing a Statement of Opposition under subsection 38(1) of the Act ($1,085.76 CAD x 10 = $10,857.60 CAD).
• if a divisional application was filed on or after the day on which the original application is advertised under subsection 37(1) of the Act, such that an opponent must commence more than one opposition proceeding in order to oppose the registration of the mark in association with all the goods and services, the opponent is entitled to a cost award equal to two times the prescribed fee for filing a Statement of Opposition under subsection 38(1) of the Act ($1,085.76 CAD x 2 = $2,171.52 CAD).
• if a hearing request is cancelled less than two weeks prior to the scheduled hearing date, the party that cancelled its request may be liable for costs in the amount of two times the prescribed fee to commence the proceeding; i.e., the prescribed fee for filing a Statement of Opposition under subsection 38(1) of the Act ($1,085.76 CAD x 2 = $2,171.52 CAD), for filing a statement of objection under subsection 11.13(1) of the Act ($1,387.00 CAD x 2 = $2,774.00 CAD) or the prescribed fee for commencing a cancellation proceeding under subsection 45(1) of the Act ($579.42 CAD x 2 = $1,158.84 CAD).
• if a party exhibits unreasonable or vexatious behaviour or conduct that results in undue delay, complexity or expense, the other party is entitled to a cost award equal to five times the prescribed fee to commence the proceeding; i.e., the prescribed fee for filing a Statement of Opposition under subsection 38(1) of the Act ($1,085.76 CAD x 5 = $5,428.80 CAD), for filing a statement of objection under subsection 11.13(1) of the Act ($1,387.00 CAD x 5 = $6,935.00 CAD) or the prescribed fee for commencing a cancellation proceeding under subsection 45(1) of the Act ($579.42 CAD x 5 = $2,897.10 CAD).

Confidentiality orders

Currently, all the materials that a party files in a proceeding before the TMOB are publicly accessible through CIPO’s website. Such materials include affidavits and statutory declarations, transcripts from cross-examinations thereon, written representations and more.

However, as of April 1, 2025, parties to such proceedings may ask the Registrar to issue a confidentiality order, to keep portions of evidence confidential, and unavailable to the public. Even if the parties to a proceeding consent to a confidentiality order, it will be issued only in exceptional circumstances, at the Registrar’s sole discretion, as it involves a major departure from the open court principle. A party seeking a confidentiality order must submit its request before filing its evidence, and:

• include a description of the information in the proposed evidence that a party wishes to keep confidential;
• include a statement that the information in the proposed evidence has not been made public;
• include an explanation as to why the information in the proposed evidence should be treated as confidential;
• indicate whether the party has obtained the consent of the other party in making the request; and
• provide all the information required to complete the model confidentiality order provided by the Registrar.

Case management

Currently, parties to TMOB proceedings may not avail themselves of case management. But, as of April 1, 2025, the Registrar may order that a TMOB proceeding continue as a case-managed proceeding.

The amendments stipulate that case management will be available in two different circumstances:

1. where matters need to be dealt with in a more efficient and cost-saving manner than that prescribed by the Regulations, the Registrar may give a direction or make an order that would supplement the steps and timelines prescribed by the Regulations; and
2. where a specific proceeding requires “heightened and ongoing” direction, the Registrar may take a more engage approach, and order that such proceeding continue as a case-managed proceeding, and vary the steps and timelines prescribed by the Regulations.

This new power will be exercised only in exceptional circumstances; the TMOB has made it clear that case management, like confidentiality orders, will be an exception, not the rule. In deciding that a TMOB proceeding continues as a case-managed proceeding, the Registrar will consider all the surrounding circumstances, including:

• whether the Registrar's intervention in the proceeding is required in order to deal with matters in an efficient and cost-saving manner;
• procedural efficiency;
• the volume of evidence in the proceeding;
• the complexity of the proceeding;
• whether the parties are represented;
• the number of related files involving the same or similar parties;
• the amount of intervention by the Registrar that the proceeding is likely to require; and
• whether substantial delay has occurred or is anticipated in the conduct of the proceeding.

For case-managed proceedings, the Registrar may give a direction or make an order that dispenses with, supplements or varies the application of any of the Regulations regarding a proceeding or any step in the proceeding. The Registrar may also give a direction or make an order that fixes the time by which or the manner in which any step in the proceeding is to be completed.

However, the amendments are clear that no such direction or order may be inconsistent with certain sections of the Regulations, listed in the relevant Practice Notice published by the CIPO.

Next steps

The amendments have been finalized and are not subject to change. They were published in the Canada Gazette, Part II on February 26, 2025. Once the amendments are in force, on April 1, 2025, the relevant Practice Notices published by the CIPO will also come into force. The Practice Notices will provide guidance on how the Registrar will give effect to the amendments to the Act and the Regulations. In addition, in the coming weeks, the CIPO will publish a new webpage summarizing the amendments.

The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.