TMOB: Recent Changes to Canadian trademark practice for Oppositions

Earlier this spring, long-awaited amendments to Canada’s Trademarks Act and Trademarks Regulations took effect on April 1, 2025, introducing notable changes to opposition proceedings before the Trademarks Opposition Board (TMOB). As detailed below, the changes introduce confidentiality orders, case management, and cost awards into opposition proceedings.  These changes are designed to reduce unnecessary delays and procedural abuses and to ensure that sensitive business information can be protected when necessary. 

Trademark owners seeking brand protection in Canada should become familiar with these new practice developments before the TMOB which are outlined in this article. Additionally, seeking to adopt opposition strategies and behaviours that align with the new practices can help maximize the new powers of the board to support brand protection and enforcement efforts. 

Confidentiality Orders

Consistent with the open courts principle, previously all documents, including evidence, submitted in opposition proceedings would be made publicly available without exception. This frequently forced parties to get creative about how to present confidential business information, such as sales revenue, often resulting in rough estimates being provided rather than more specific data. 

However, the amendments now allow parties to make a request to the TMOB for a confidentiality order with respect to some or all of the evidence that they intend to submit. Such requests must be made before any evidence at issue is submitted to the TMOB, and the requests themselves will remain available to the public. Further, even if the other party consents to the request, the onus lies on the party seeking the confidentiality order to justify it based on whether the circumstances satisfy the following three criteria as stated by the Supreme Court of Canada in Sierra Club of Canada v Canada (Minister of Finance), 2002 SCC 41 and Sherman Estate v Donovan, 2021 SCC 25:

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

In this context, examples of “important public interest” include:

• a party breaking its contractual obligations to protect the confidential information of a third party;
• the public interest in preserving human dignity; and 
• the public interest in fair competition.

With respect to “reasonably alternative measures”, the Registrar is of the view that for most proceedings, redacting documents or describing evidence more broadly (e.g., rounded sales figures) are sufficient to prevent the risk to public interest without a confidentiality order. Further details can be found in the TMOB’s Practice Notice on Confidentiality Orders.

Case Management

While the TMOB previously had the ability to consolidate opposition proceedings involving related marks and parties, this authority has now been broadened, enabling the TMOB to provide ongoing case management and flexibility to tailor proceedings in exceptional cases, particularly where the evidence is exceptionally voluminous or complicated. The TMOB has also indicated that where a confidentiality order has been made in an opposition proceeding, case management may also be used to facilitate the efficient submission of documents in accordance with a confidentiality order, as well as preserving confidentiality in a hearing and in the issuance of a decision by the TMOB.  Further details regarding the circumstances where the Registrar may designate a proceeding as a case-managed proceeding can be found in the TMOB’s Practice Notice on Case Management.

Cost Awards

Lastly, the amendments allow the TMOB to award costs in opposition proceedings. Notably, such cost awards are not intended to compensate a successful party, but rather to discourage undesirable behaviours that cause undue delay and expense in opposition proceedings. Further, the TMOB will only consider awarding costs at the request of a party within 14 days after the oral hearing stage, or after the end of the one-month period for filing a request for a hearing if neither party had filed such a hearing request in the proceeding.

The specific costs awarded by the TMOB are predetermined and represent a multiplier of the prescribed fee for filing a Statement of Opposition (approximately, CAD $1,085 in 2025).  The amount awarded depends on which of the following four limited circumstances apply in a particular proceeding: 

1. The trademark application is refused in whole or in part on the ground that it was filed in bad faith.  (Cost Award: 10X the prescribed fee; about $10850 in 2025)
2.    Where a divisional application was filed on or after the date of advertisement for the original application, (Cost Award: 2X the prescribed fee; about $2170 in 2025)
3. A party withdraws a request for a hearing less than 14 days before the scheduled hearing date. (Cost Award: 2X the prescribed fee; about $2170 in 2025)
4. Where a party engages in unreasonable conduct that causes undue delay or expense in the proceeding. (Cost Award: 5X the prescribed fee; about $5425 in 2025)

Some examples of “unreasonable conduct” include:

• Failing to attend a hearing or cross-examination without informing the TMOB;
• Breaching a confidentiality order;
• Lack of co-operation with the other party for scheduling cross-examination;
• Pursuing a ground of opposition with no reasonable chance of success;
• Acting disrespectfully or maligning the character of another party. 

Further details, including the transitional provisions that apply to ongoing opposition proceedings, can be found in the TMOB’s Practice Notice on Cost Awards.

This article provides an overview of new TMOB practice developments and should not be taken as legal advice. If you need any assistance, or would like to explore how these developments could impact your trademark opposition strategies, please contact a member of our trademarks team.