On 1 April 2025, the Trademarks Office at the Canadian Intellectual Property Office (TMO) published practice notices governing case management, confidentiality orders and cost awards (the triple-Cs) that govern all proceedings that it oversees, including oppositions and cancellation proceedings.

L Vivienne Stern and Sanjukta Tole explain the practice notices.

Case management

The TMO has introduced rules allowing case management governing both opposition and non-use cancellation proceedings that aim to create productive and cost-effective procedural solutions, particularly for exceptional cases.

Therefore, the TMO now has the power to give any direction or make any order to manage its proceedings, particularly to hear related files together or consecutively, convening a conference call with the parties to address scheduling and conduct of upcoming hearings, and managing uncooperative behaviour that may hinder a proceeding.

A request for case management can be made and the TMO will advise if it is necessary based on, inter alia, whether substantial delay has occurred or will occur, how complex the proceedings are, the number of related files and whether the parties are represented.

Three situations are identified by the TMO as circumstances that could warrant case management: divisional applications in oppositions, corrections to protocol applications, and proceedings in which an order has been made by the TMO that the evidence be kept confidential.

In contrast, the TMO is unlikely to use its case management powers in opposition proceedings to grant amendments or strike all or parts of parties’ pleadings, or to grant extensions of time where such a request has been refused.

Confidentiality orders

All documents filed in trade mark proceedings before the TMO are de facto available to the public pursuant to the open court principle. In recent years, the TMO has made such documents available online.

Now, in exceptional circumstances, the TMO may order that information contained in affidavit evidence filed by any party to a proceeding remain confidential upon request of the party providing the information.

Prior to submitting the evidence in a proceeding, a party may request that a portion or all of the evidence that they intend to submit be kept confidential. However, the TMO will not grant requests to keep any pleading or part thereof confidential as such orders may only apply to evidence filed in proceedings before the TMO pursuant to statute.

The Supreme Court of Canada has specified that a person requesting a confidentiality order must demonstrate that:

1. The open court principle poses a serious risk to an important public interest;
2. The order sought is necessary to prevent this serious risk to the identified interest because reasonable alternative measures will not prevent this risk; and
3. As a matter of proportionality, the benefits of the order outweigh its negative effects.

The TMO has adopted this test to evaluate requests for confidentiality orders in proceedings it oversees. If an order is issued, the TMO will set out the manner of serving and submitting confidential information by the party making the request.

A confidentiality order may be revoked or amended by the TMO, including the designation of additional information as confidential. Where it is necessary to refer to information that has been designated “confidential” in a ruling or decision, the TMO will issue a public version which has been redacted and a confidential version that contains the full decision.

Cost awards

In exceptional circumstances and upon request, the TMO may award costs against a party to a proceeding, regardless of whether the party is successful.

Cost awards are meant to encourage parties to conduct themselves efficiently. Therefore, any request for costs must detail the reasons for the request and the circumstances for which costs are sought. The TMO may award costs in the following non-exhaustive circumstances:

1. Against an applicant where a trade mark application is refused by the TMO on the grounds that it was submitted in bad faith for certain goods or services;
2. Where a party files a divisional application after the original application has been advertised, and the costs relate to that specific divisional application;
3. Where a party withdraws its attendance at a hearing less than 14 days before the scheduled date of that hearing; or
4. Where a party’s unreasonable conduct causes undue delays or expenses in the proceeding.

The non-requesting party is given the opportunity to respond to a claim for costs by the TMO.

The TMO will provide reasons for its decision on any cost awards and directions thereto. A schedule for costs awards also came into force on 1 April 2025, highlighting the principle that parties must have knowledge of the law before acting.

Costs will not be awarded where the grounds to claim costs occurred prior to 1 April 2025. This will have only a short-term effect as most proceedings commenced prior to 1 April 2025 will conclude soon if they have not done so already.

L Vivienne Stern is an Associate and Sanjukta Tole is a Partner with Dickinson Wright LLP in Canada. Sanjukta is a member of the MARQUES International Trade Mark Law and Practice Team