Canadian Trademarks Year in Review: Part 1 Practice Updates and Developments

In the beginning of the year (2025), the TMOB began a pilot project to determine how many registered trademarks are no longer in use. To do this, the Registrar of Trademarks initiated section 45 non-use cancellation proceedings against a limited number of trademark registrations at random. 

In phase 1 of the pilot project, the TMOB sent out 100 non-use cancellation notices in January followed by 50 notices in June and another 50 notices in July, so 200 notices in total. While the full results of the proceedings initiated in June and July are still pending, according to the TMOB website, of the 100 non-use cancellation notices issued in January, 54 registrations were expunged for failure to respond, 10 proceedings were discontinued on the registered owner’s consent where the evidence clearly indicated that the registered trademark remained in use, and the remaining 36 proceedings resulted in an official decision maintaining the corresponding registrations. 

In phase 2 of the pilot project, the TMOB will organize consultations to gather feedback on: 

(Cost Award: 5X the prescribed fee; about CAD$5,575 in 2026) 

Further details, including some examples of what may constitute “unreasonable conduct” can be found in the TMOB’s Practice Notice on Cost Awards. 

Confidentiality Orders 

Previously all documents, including evidence, submitted in opposition proceedings would be made publicly availability without exception. 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, though the request itself will remain available to the public. 

The party seeking the confidentiality order must establish that 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: 

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 for preventing the risk to public interest without a confidentiality order.  

Further details, including some examples of what may constitute an “important public interest” 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. 

Declaration of use of AI 

In an effort to adapt to the increasing prevalence of the use of AI tools in the legal field (and to mitigate the submission of fake case law hallucinated by AI), effective June 4, 2025, the TMOB introduced a policy requiring the first paragraph of each document in which AI was used to create or generate content, to include the following declaration: 

Artificial intelligence (AI) was used to generate content in this document. All content generated by AI, and the authenticity of all authorities cited in this document, has been reviewed and verified by the [include the name of the party to the proceeding], or their trademark agent. 

Further details, including examples of documents considered as including (or not including) content generated by AI can be found in the TMOB’s practice notice on the Use of AI in proceedings before the Trademarks Opposition Board. 

On April 1, 2025, several amendments to the Trademarks Act (the “Act”) came into force, bringing important changes to multiple areas of trademark law, and creating new considerations for rights holders and practitioners alike. 

An amendment to section 56(5) of the Act significantly changed the landscape of appeals from decisions of the Trademarks Opposition Board (TMOB). The amended provision requires that parties seek leave of the Federal Court in order to adduce new evidence on appeal. Prior to the amendment, an appealing party had an automatic right to file new evidence before the Federal Court, which often resulted in strategic decisions to hold back evidence before the TMOB. Under the new regime, parties will be incentivized to put their best foot forward at first instance.Following the enactment of this amendment, in July 2025, the Federal Court issued an updated Consolidated Practice Direction, with a new section that provides direction to parties seeking leave to adduce new evidence pursuant to s. 56(5). 

The newly introduced subsection 53.2(1.1) of the Act introduces novel requirements on trademark owners who seek to enforce their rights in a recently-registered trademark. Specifically, in order to access remedies for trademark infringement or depreciation of goodwill, the trademark owner must show that its trademark was in use in Canada since being registered or demonstrate special circumstances that excuse non-use.  This requirement applies to trademarks registered within three years of the lawsuit.