Draft – Practice notice on confidentiality orders

Publication Date: 202X-XX-XX

This practice notice sets out the practice of the Registrar of Trademarks (the Registrar) with respect to confidentiality orders under section 45.1 of the Trademarks Act.

[Consultation note: This draft practice notice makes reference to proposed amendments to the Trademarks Regulations which also form part of this consultation. See here for a description of the proposed regulatory amendments.]

Relevant legislation and practice notices

On this page

I. Introduction

As a general rule, all documents relating to trademark proceedings including in proceedings under section 11.13, 38 and 45 of the Act, are available to the public [section 29(1)(f) of the Act]. Hearings in trademark proceedings are also open to the public, consistent with the open court principle which provides that public confidence in the integrity of the justice system and understanding of the administration of justice is best achieved by ensuring access.

Notwithstanding the above, the Registrar of Trademarks (the Registrar) may order that some of the evidence should be kept confidential in trademark proceedings pursuant to section 45.1(4) of the Act and XX of the Regulations.

The Registrar views these requests as exceptional because they involve a major departure from the open court principle. Specifically, the excessive use of or overly broad confidentiality orders may undermine the Registrar's ability to issue reasons for decisions that publicly disclose all the relevant information upon which decisions are based. The Registrar is of the view that for most proceedings redacting documents or describing evidence broadly, for example, yearly sales of over $1 million, is sufficient for a just determination.

II. Requests for confidentiality orders

A party to a proceeding under sections 11.13, 38 and 45 of the Act may request that some of the evidence that they intend to submit to the Registrar be kept confidential [section 45.1(1) of the Act]. As section 45.1(1) of the Act is specific to evidence, the Registrar will not consider requests to keep a statement of opposition or counter statement or part of a statement of opposition or counter statement confidential.

II.1. Timing

According to section 45.1(2), a request to keep some of the evidence confidential must be made prior to submitting the evidence at issue. The Registrar will not consider a request for a confidentiality order if the evidence at issue is submitted before the Registrar notifies the party in accordance with sections 45.1(3) and (4) of the Act. A request for a confidentiality order will have no effect on a party's deadline for submitting and serving their evidence unless the party specifically requests an extension of time under section 47 of the Act prior to or at the same time they request the confidentiality order. In such cases, the Registrar will generally grant the party a one-month extension of time from the date of the confidentiality order to submit and serve their evidence.

II.2. Content of the request

A request for a confidentiality order must be filed using the Trademarks Opposition Board (TMOB)'s online E-services and contain the following:

  1. A description of the information in the proposed evidence that a party wishes to keep confidential (for example, personal medical information, terms of a settlement agreement, internal marketing plans);
  2. A statement that the information in the proposed evidence has not been made public;
  3. An explanation as to why the information should be treated as confidential;
  4. An indication as to whether the party has obtained the consent of the other party; and
  5. All the information required to complete the model confidentiality order provided by the Registrar.

[section XX of the Regulations]

The submissions in the request must have sufficient information to fulfil the test as set out below.

Parties should note that even if a confidentiality order is granted, the request for a confidentiality order and any submissions received from the other party, remain available to the public.

III. Comments from the other side

Where consent from the other party is not indicated, the Registrar will ask the other party for its comments.

IV. Test used to grant or deny confidentiality orders

IV.1 Tests for issuing a confidentiality order as set out in Sierra Club and Sherman

The test for issuing a confidentiality order, as articulated by the Supreme Court of Canada in Sierra Club of Canada v Canada (Minister of Finance), 2002 SCC 41 at para 53 and as recast in Sherman Estate v Donovan, 2021 SCC 25 at para 38, includes three core prerequisites that are to be established by a person seeking an exception to the open court principle (Sherman at para 38 citing Sierra Club at para 53):

  1. court openness poses a serious risk to an important public interest because reasonably alternative measures will not prevent the risk;
  2. the order sought is necessary to prevent that risk; and
  3. the benefits of the order outweigh its negative effects.

IV.1.a Serious risk to an important public interest

The Registrar will generally qualify a "serious risk" as a risk that is real and substantial, and that poses a serious threat to an important interest. An "important interest" relating to sensitive information is an interest which can be expressed in terms of a public interest in confidentiality, as opposed to an interest that is merely specific to the party requesting the order.

Important public interests include: a party breaking its contractual obligations to protect the confidential information of a third party (Sierra Club), the public interest in preserving human dignity (Sherman), and the public interest in fair competition (Resolve Business Outsourcing Income Fund v Canadian Financial Wellness Group Inc., 2014 NSCA 98). The Federal Court has previously found potential harm to a competitive position and negotiations with suppliers, customers, competitors and brand companies to not form a serious risk to a public interest (Pharmascience Inc. v Meda AB, 2021 FC 1216).

IV.1.b Reasonably alternative measures

In considering "reasonably alternative measures", the Registrar will consider, for example, whether redacting information in the documents at issue, would be a reasonable alternative to a confidentiality order. If a confidentiality order is issued, the Registrar will restrict the order as much as is reasonably possible while preserving the interest in question.

IV.1.c Benefits of the order outweigh its negative effects

In considering whether the benefits of a confidentiality order outweigh its negative effects, the Registrar will consider whether the confidential information is required and/or relevant to the proceeding.

IV.2 Consent

While the consent of the other party in the proceeding may inform the Registrar's assessment of the prerequisites set forth in the Regulations and Sierra Club and Sherman, nevertheless, a confidentiality order is an extraordinary order, and the onus lies on the party seeking it to justify a departure from the requirement that evidence in a proceeding is available to public.

V. Manner of serving and submitting confidential information

The confidentiality order issued by the Registrar is based on the Federal Court's model confidentiality order with modifications to set out that all documents including confidential information must be submitted electronically through the TMOB's online E-services. A model order is set out at Schedule A.

V.1 Service on other party

The confidentiality order will confirm the method of serving the confidential information on the other party, as well as any other terms. Typically, the parties will be directed to use the service function through the TMOB's online E-services.

V.2 Submission to the Registrar

Evidence that has been ordered to be kept confidential according to section 45.1(4) of the Act must be submitted to the Registrar pursuant to the terms in the confidentiality order. These terms may require that two versions be submitted electronically, namely:

  1. a public version with the reference to the confidential information redacted; and,
  2. a confidential version containing all the references to the confidential information highlighted in yellow or on a yellow background.

VI. Subsequent documentation

VI.1 Service on other party

Any subsequent documentation referencing the confidential information (such as cross-examinations or written submissions) will need to be served under the same terms as the original confidential information (as per the confidentiality order).

VI.2 Submission to the Registrar

Any subsequent documentation referencing the confidential information (such as cross-examinations or written submissions) will need to be submitted to the Registrar pursuant to the terms in the confidentiality order. These terms may require that two versions be submitted electronically, namely:

  1. a public version with the reference to the confidential information redacted; and,
  2. a confidential version containing all the references to the confidential information highlighted in yellow or on a yellow background.

VII. Hearing

At the beginning of the hearing, the Registrar will explain how the portions of the hearing dealing with the confidential information will be handled and any members of the public attending the hearing will be excluded from those parts dealing with confidential information.

VIII. Reference to confidential information in decision

Wherever possible, the Registrar ensures that public documents that the Registrar produces contain only information that has been put into the public domain and do not include confidential information.

If it is necessary to refer to the confidential information in a ruling or decision, two versions of the decision will be issued by the Registrar, namely:

  1. a public version with any confidential information redacted; and a
  2. a confidential version.

If warranted, after issuing the confidential version of the decision, the Registrar may contact the parties to confirm the redactions on the public version in advance of the public version being issued.

IX. Confidentiality order may be filed with the Federal Court

The Act provides that a certified copy of the Registrar's confidentiality order may be filed in the Federal Court and, on being filed, the order becomes and may be enforced as an order of that Court [section 45.1(6) of the Act].

X. Breach of a confidentiality order

Parties are bound by the confidentiality order to protect any confidential information provided to them pursuant to the order. Should a party become aware of a confidentiality breach or even a potential confidentiality breach, it would be up to that party to seek a remedy at the Federal Court.

If a party breaches the confidentiality order during the course of a proceeding, the Registrar may award costs against that party.

This practice notice is intended to provide guidance on the Canadian Intellectual Property Office practice and interpretation of relevant legislation. In the event of any inconsistency between this notice and the applicable legislation, the legislation must be followed. The provisions of this practice notice are general guidelines only, are not binding in any particular case and are subject to change.

Schedule A (Model Order)

Trademarks Opposition Board
Confidentiality Order

Upon request made by the <insert> for an order pursuant to section 45.1(1) of the Act that certain information relating to <insert>, be treated as confidential and be sealed in the Registrar's records;

And upon considering the submissions and the consent <if applicable> of the parties attached hereto;

This registrar orders that:

  1. For the purpose of this Order the following is designated as Confidential Information and may be filed and treated as confidential in accordance with this Order:
    1. <insert>
  2. Whenever a party seeks to file with the Registrar documents or portions thereof, including affidavits, exhibits, transcripts or written submissions which contain or discuss Confidential Information as defined in paragraph 1 of this Order, in a manner that would reveal its content, the Confidential Information shall be segregated from the other information and documentation being submitted for filing and shall be submitted to the Trademarks Opposition Board in the form of electronic documents with the confidentiality designation reflected in the file name.
  3. A public version of the document from which the Confidential Information has been redacted must also be filed as part of the public record.
  4. The terms and conditions of use of Confidential Information and the maintenance of the confidentiality thereof during any hearing of this proceeding, shall be a matter in the discretion of the Registrar.
  5. In the absence of written permission from the Party who disclosed Confidential Information, Confidential Information shall not be disclosed to anyone except the Registrar, Canadian Intellectual Property Office (CIPO) employees and the following:
    1. Party A and Party B
    2. agents for the parties, and its employees and contractors;
    3. any consultants, foreign agents of the agents and their employees and contractors; and
    4. such other persons as the Parties may agree in writing or as the Registrar may order.
  6. Where it appears to the Registrar or to a party that documents have been filed under seal pursuant to this Confidentiality Order which do not fall within the scope of this Confidentiality Order or that information designated by this Confidentiality Order as Confidential Information is available or has been obtained by the receiving party other than through disclosure in this proceeding, or has been made public and should no longer be treated as Confidential Information, the party may seek directions from the Registrar or the Registrar may unilaterally issue directions for the filing party to show cause why the documents should not be unsealed and placed on the public record.
  7. Any Confidential Information submitted to the Registrar in accordance with this Confidentiality Order shall be treated as confidential by Registrar and shall not be available to anyone other than the parties and employees or contractors of CIPO. Notwithstanding this section, on appeal, the confidential information will be included in the certified file history transmitted to the Federal Court.
  8. The Confidential Information shall be used solely for the purpose of this proceeding and may not be used for any other purpose.
  9. Subject to any further order of the Registrar, the termination of this proceeding shall not relieve any person to whom Confidential Information was disclosed pursuant to this Confidentiality Order from the obligation of maintaining the confidentiality of such information in accordance with the provisions of this Confidentiality Order. The provisions of this Order shall continue after the final disposition of this proceeding.
  10. Upon final termination of this proceeding (including appeals), each Party shall destroy within sixty (60) days all items containing Confidential Information pursuant to this Confidentiality Order. Notwithstanding the above, agents for the Parties may keep one (1) copy of Confidential Information in their files. The Registrar will retain the Confidential Information until such time as the Registrar may elect to destroy it (see section 29.1 of the Trademarks Act).
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