Background
This update of the Trademarks Regulations (the Regulations) follows the amendments to the Trademarks Act (the Act) contained in Part 4, Division 7 of the Budget Implementation Act, 2018, No.2 (Bill C-86).
In April 2018, the Government of Canada announced the Intellectual Property (IP) Strategy to help entrepreneurs and innovators better understand and protect their IP rights. To that end, targeted legislative amendments were made to the Act under Bill C-86, which received Royal Assent on , to introduce a series of measures destined to improve the efficiency of IP dispute resolution and discourage undesirable behaviors in proceedings.
Among other changes, Bill C-86 gave three new authorities to the Registrar of Trademarks, to be exercised in the context of opposition, objection and section 45 proceedings. They are 1) awarding costs, 2) granting confidentiality orders and 3) case managing proceedings. Although Bill C-86 enabled the new authorities, the procedural aspects necessary to support and implement these authorities were left to the Regulations.
This document provides information regarding the proposed additions to the Regulations and accompanying draft practice notices, that CIPO has developed to carry out the amendments that were made to the Act. In addition to being consistent with the IP Strategy, these amendments aim to provide the TMOB with the tools needed to discourage undesirable behaviors in proceedings, protect confidential evidence and manage complex cases. The introduction of these proposed amendments will also increase the overall effectiveness of the TMOB and ensure that it continues to deliver trademark rights in a timely manner.
In order to ensure that these proposed amendments address our clients' needs, CIPO is undertaking this consultation. Your feedback, comments and suggestions on the proposed amendments and the draft practice notices will help guide the amendments to the regime and ensure that the drafted rules and the proposed practices streamline and clarify procedures prior to their pre-publication in the Canada Gazette Part 1.
The document is divided into three sections, each of which presents the proposed amendments to the Regulations.
Section 1: Cost Awards
This section outlines in which circumstances the Registrar will award costs in opposition, section 45 and objection proceedings, sets the period and mechanism in which a party may request costs and respond to a costs request made by the other side.
Section 2: Confidentiality Orders
According to section 45.1(4) of the Act, introduced under Bill C-86, the Registrar must be satisfied that the information in the proposed evidence should be treated as confidential, notwithstanding the public interest in open and accessible proceedings, before ordering that such evidence be kept confidential.
This section details the process by which a party may request a confidentiality order.
Section 3: Case Management
This section provides information on the two different ways in which case management will be practiced by the Registrar in opposition, section 45 and objection proceedings.
Section 1: Cost Awards
Under the proposed amendments, cost awards may be awarded in an opposition, section 45, or objection proceeding only at the request of a party. The proposed Regulations also set out that 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 which do not reach a decision.
The proposed Regulations will also list in which circumstances the Registrar may award costs. Specifically, they set out that for opposition, objection and section 45 proceedings, the Registrar may order costs, if:
- a party who filed a request for a hearing withdraws their request less than two weeks prior to the scheduled hearing date; or
- a party engages in unreasonable conduct which causes undue delay, complexity or expense in a proceeding.
In addition, for opposition proceedings only, the proposed amendments will also set out two additional circumstances for cost awards:
- 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; and
- 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.
The proposed amendments will detail the mechanism by which parties may request costs including that:
- a request for costs must be filed using TMOB's online E-services and include the reasons for the request within 14 days of a hearing and, where there is no hearing within, 14 days of the deadline to request a hearing or the cancellation of a hearing; and
- the other party may respond by using TMOB's online E-services within 14 days after the day on which the Registrar gives notice of the costs request.
The amounts proposed to be awarded for each of the triggers are as follows:
- If a hearing request is cancelled less than two weeks prior to the scheduled hearing date – two times the prescribed fee to commence the proceeding (ie) the prescribed fee for a statement of opposition under subsection 38(1) of the Act, for a statement of objection under subsection 11.13 (1) of the Act or the prescribed fee for a request for the giving of a notice under subsection 45(1) of the Act.
- If there is unreasonable conduct which causes undue delay, complexity or expense – fives times the prescribed fee to commence the proceeding (ie) the prescribed fee for a statement of opposition under subsection 38(1) of the Act, for a statement of objection under subsection 11.13 (1) of the Act or the prescribed fee for a request for the giving of a notice under subsection 45(1) of the Act.
- With respect to an opposition proceeding where a bad faith ground of opposition succeeds - ten times the prescribed fee for a statement of opposition under subsection 38(1) of the Act.
- For each divisional application for the registration of a trademark that was filed on or after the day on which the original application is advertised – two times the prescribed fee for a statement of opposition under subsection 38(1) of the Act.
The practice notice Draft - Cost awards in proceedings under section 11.13, 38 and 45 of the Trademarks Act provides guidance on how the Registrar will give effect to the amendments to the Act and the proposed amendments to the Regulations.
Section 2: Confidentiality Orders
The proposed amendments to the Regulations detail the mechanism by which a party may request a confidentiality order, which require a party to:
- use TMOB's online E-services;
- 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.
The Registrar views requests for confidentiality orders as exceptional because they involve a major departure from the open court principle. The practice notice Draft-Practice notice on confidentiality orders provides guidance on how the Registrar will give effect to the amendments to the Act and the proposed amendments to the Regulations.
Section 3: Case Management
The proposed amendments provide that case management will be practiced by the Registrar in two different ways in opposition, section 45 and objection proceedings.
First, in situations where, in relation to a proceeding or a step in a proceeding, matters need to be dealt with in a more efficient and cost-saving manner, the proposed Regulations allow the Registrar to give a direction or make an order that would supplement the Regulations.
Second, in cases where a specific proceeding requires a heightened and ongoing direction, the proposed amendments allow for a more engaged form of case management to be exercised. Specifically, they specify that in such cases, the Registrar is able to order, at any time during the proceeding, that such proceeding continue as a case-managed proceeding. In deciding to do so, the Registrar will have regard to 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;
- volume of evidence;
- complexity of the proceeding;
- whether the parties are represented;
- 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 varies, supplements or dispenses with the application of any of the Regulations with respect to the proceeding or any step in the proceeding or fixes the time by which or the manner in which any step in the proceeding is to be completed.
The proposed amendments also set out that the Registrar is not permitted to give a direction or make an order that is inconsistent with sections 35, 49, 56(1), 83, 91(1), 125, 126, 128 of the Regulations.
The practice notice Draft - Case management in proceedings under sections 11.13, 38 and 45 of the Trademarks Act provides guidance on how the Registrar will give effect to the amendments to the Act and the proposed amendments to the Regulations.