April 1st, 2025 is a real tricky day for Canadian trademarks practice. It marks the coming into force of the final portion of Canada’s long-running trademarks reforms. This is no hoax! As we will see, some of these reforms present opportunities for brand owners, while others introduce quirky rules that could lead the unwary to lose their rights. This last round of reform has been lurking in the shadows for some time, but it can really bite.
Here goes our smorgasbord of legal curiosities in the world of Canadian brands!
Mind your evidence. It is no longer possible to add new evidence as-of-right when appealing a decision of the Trademarks Registrar both in oppositions and administrative cancellation proceedings. Instead, permission of the Federal Court will now be required. It is still unknown what standard will apply or how readily permission will be granted. It is now recommended to put your best foot forward in your evidence in administrative proceedings.
Shhh, it’s a secret! It is now possible to shield confidential evidence filed during administrative cancellation proceedings. A request must be made prior to filing your evidence and an extension of time to file that evidence is available to await a ruling. But beware, only the general public will be prevented from accessing the evidence, not the other party. Don’t be fooled into a false sense of security! The Registrar has announced that it will be treating this as an exceptional measure that will require compelling reasons to issue a confidentiality order. It is best to keep your deepest, darkest secrets for another day! And note that there are still no confidentiality procedures during the administrative phase of prosecution, so evidence filed with trademark examiners will remain public no matter how sensitive.
Money, money, money. The Registrar now has the authority to award costs in administrative proceedings against undisciplined parties, pranksters and tricksters included. These costs awards will not be necessarily tied to winning the case, and instead depend on specific circumstances. Over CAD $11,000 may be awarded to an opponent that wins on an opposition based on bad faith filing of the opposed trademark application. A cost award of over CAD $5,000 is available against parties acting unreasonably, including by misconduct around cross-examinations and maintaining grounds of opposition with no reasonable prospect of success. This can be awarded even against a winning party. Cancelling a hearing too late will be sanctioned by costs of over CAD $2,000. Scheming applicants and opponents now risk taking a hit to their pocketbook!
Officially Over. Official marks, a unique feature of Canadian trademark practice that covers in one swift publication all 45 classes, are now vulnerable to cancellation. It had practically been a fool’s errand to challenge them before a court of law in the past. It is now possible to cancel these through administrative proceedings due to the lack of standing as a public authority by its owner or the owner ceasing to exist. Before clearer and stricter standards were put in place, many official marks were awarded to non-governmental entities who do not qualify as Canadian public authorities, or to public authorities who ceased to exist due to government reorganizations. A time of reckoning has come for those entities not sufficiently controlled by a Canadian government.
Government-Initiated Non-use Cancellations. The Registrar of trademarks has embarked on a significant wave of non-use cancellation proceedings. Between 50-100 cancellation proceedings against randomly selected trademarks are being launched every month in 2025. This is no wild ride, there is a method to this flurry of cancellations as it aims to assess the profile of marks on the register that are successfully cancelled. Further phases of the program may target marks judged to be at higher risk of non-use or abusively-wide scope. Will your registration be next?
Is Your Registration an Empty Threat? Newly registered trademarks will be facing turbulent waters. It is now mandatory to show use of a registered trademark to secure redress in infringement litigation initiated in the three-year period following registration. It is unclear whether use in association with a single good or service will be sufficient to ground a claim on the registration as a whole, or whether the practical scope of the registration will be limited to the specific goods and services in respect of which use is shown.
A New Twist on French Language Laws. Another surprise awaits on June 1, 2025 as it will mark the coming into force of new language regulations in the Province of Quebec. Trademarks visible from outside business premises can remain untranslated, but if so, they will need to be accompanied by French language texts, such as descriptive terms, slogans, etc. that will take up twice as much space. A good number of unwitting business owners will soon be placing frantic calls to signage manufacturers. Moreover, it will no longer be possible to file a trademark for an entire label as a way of avoiding translation obligations, since Quebec now requires translating descriptive or generic terms on product labels/packaging, even if they are included in a trademark registration. This promises to be a challenging puzzle for certain registrations, both in terms of graphic design and legal strategy. If you or your licensees are operating in Canada, you should act before you end up in hot water.
As always, the Fasken team is ready to help you navigate these uncharted waters!
