Effective April 1, 2025, amendments to the Trademarks Act introduced in 2019 will come into force.

These legislative changes grant the registrar new authority to:

1. award costs in relation to objection, opposition, and s. 45 expungement proceedings;
2. issue confidentiality orders in relation to objection, opposition, and s. 45 expungement proceedings; and
3. effectively revoke protections granted to official marks, in specified circumstances.

These legislative changes further restrict remedies available in the Federal Court in that:

1. parties will be required to demonstrate active use of a trademark registered less than three years to enforce any exclusive rights in the mark; and
2. parties will now be required to seek leave to file fresh evidence in any appeal from a decision of the registrar or the opposition board.

Cancellation of Official Marks

Perhaps the most notable of the impending amendments is the changes to the official marks regime.

The marks, arms, crests and flags of public authorities can be registered as official marks. Public authorities include any level of government, colleges and universities, hospitals and other agencies subject to significant government control. Unlike traditional trademarks, official marks enjoy a monopoly for all goods and services in the Canadian marketplace. The applications are not subject to potential opposition by third parties and, once recorded, official marks never require renewal.

Prior to these amendments, official marks were also not subject to summary expungement for non-use. Now, where the public authority that had previously requested public notice be given of the adoption of an official mark is not a public authority, or has ceased to exist, the Registrar will be empowered to give public notice to that effect, whether at the request of a third party or on their own initiative.

These changes will allow private enterprises to remove official marks from the register that are an artificial obstacle to the registration of their own trademarks.

Confidentiality Orders

The Registrar will also soon be able to issue confidentiality orders in respect of evidence to be submitted by parties to adversarial proceedings.

Confidentiality orders must be requested by the parties and may be requested vis-à-vis any portion of the evidence that the party intends to submit. A proper request shall include the following information:

1. a description of the evidence sought to be kept confidential;
2. a statement that the evidence has not been made public;
3. the reasons why the evidence should be kept confidential;
4. an indication as to whether the request is being made with the consent of the other party; and
5. any other information required by the Registrar.

Parties should also bear in mind several additional points. First, requesting a confidentiality order does not extend the time for filing evidence unless a request for an extension of time is filed either before or at the same time. The benchmark extension of time granted in these circumstances will be for one month. Second, evidence which is the subject of a confidentiality order must be submitted in paper. Third, subsequent documentation referencing evidence which is the subject of a confidentiality order must also be submitted in paper. Finally, confidentiality orders are subject to revocation or amendment at any time during proceedings.

Costs Awards

As with confidentiality orders, the Registrar will soon be able to issue costs awards in respect of adversarial proceedings. Unlike costs in court proceedings which aim to help recoup the successful party’s legal expenses, cost awards issued by the Trademarks Opposition Board (the “Board”) are designed to promote the efficient advancement of proceedings and will not necessarily be awarded to the successful party. Costs will not be awarded at all if proceedings are ended before the Board issues a final decision.

Where a hearing has been requested, the parties must request costs within 14 days of the hearing concluding or being cancelled. Otherwise, the request must be submitted within 14 days of the end of the one-month period for requesting a hearing. In their request, both the reason for the request and the particulars of the circumstances giving rise to it must be specified.

In opposition proceedings, costs will be fixed as a multiple of the fee for filing a statement of opposition and will be available as indicated below:

1.	a party’s application for registration is refused on bad faith grounds	10 times opposition fee or $10,857.60
2.	a party files a divisional application on or after the date of advertisement of the original application	2 times opposition fee or $2,171.52
3.	a party withdraws their request for a hearing less than 14 days before the hearing is scheduled to occur	2 times opposition fee or $2,171.52
4.	unreasonable conduct causes undue delay or expense.	5 times opposition fee or $5,428.80

In objection and non-use expungement proceedings, costs may be awarded for the late cancellation of hearings and for unreasonable conduct that causes undue delay or expense for the sums indicated in the table below.

1.	Late cancellation of hearing	2 times expungement fee or $1,158.84	2 times objection fee or $2,896.06
2.	Unreasonable conduct causing undue delay or expense	5 times expungement fee or $2,897.10	5 times objection fee or $7,240.15

Note that the fees to file a statement of opposition, to file a statement of objection and to request summary expungement increase each year on January 1 and the above cost awards will similarly increase.

Evidence of Use Required to Enforce Rights in New Registrations

Owners of registered marks which have been on the register for fewer than three years, and are therefore not subject to expungement for non-use, will generally be required to demonstrate use of the trademark in order to enforce their rights in the Federal Court. Where there has been no use of the mark, owners may still enforce their trademark rights if they can establish the existence of special circumstances excusing the non-use.

Fresh Evidence on Appeal to Federal Court

Parties to an appeal from a decision of the registrar or the opposition board will no longer be able to file fresh evidence as of right. Under the amendments coming into force, parties will now be required to seek leave of the Federal Court to adduce any evidence beyond what was submitted to the registrar or the board. As a result, parties are encouraged to present their best evidence at the earliest stages of any proceeding.