Trademark opposition and expungement practice in Canada changed materially on April 1, 2025, when a package of amendments to the Trademarks Act and Trademarks Regulations, published in the Canada Gazette as SOR/2025-19 on February 26, 2025, came into force. The changes affect how proceedings before the Trademarks Opposition Board are run, not the substantive grounds parties argue.
The Registrar Can Now Award Costs
For the first time, the Registrar has authority to award costs against a party for specific impugned conduct: cancelling a scheduled hearing late, causing undue delay or expense through unreasonable behaviour, filing a divisional application after the original application has been advertised, or losing an opposition on the ground that the underlying application was filed in bad faith. A successful bad faith ground carries a specific costs consequence, set at ten times the fee for commencing the proceeding, a meaningful deterrent against opportunistic or bad faith filings.
Confidentiality Orders Are Now Available
A party to an opposition, cancellation, or objection proceeding can now ask the Registrar to keep some or all of its evidence confidential, provided the request is made before that evidence is filed. This closes a gap that previously left sensitive commercial evidence, sales figures or licensing terms, for example, exposed on the public record simply because a party needed to rely on it.
Case Management for Complex Files
The Registrar may now designate a proceeding as case-managed, either on its own initiative or at a party's request, reserved for exceptional circumstances such as divisional application disputes, corrections to protocol applications, or proceedings already subject to a confidentiality order. For a file that has become genuinely complicated, this offers a more active hand on scheduling and procedure than the Board previously exercised.
A New Path for Stale Official Marks
The amendments also introduced a mechanism to challenge official marks under section 9 that no longer reflect a legitimate public authority still using them, addressing long-standing frustration with marks that block ordinary trademark applications while sitting dormant.
What This Means for Active and Prospective Filers
None of this changes what makes a mark registrable, but it changes the cost and risk calculus of contesting one, and of defending against a bad faith allegation, since an unreasonable litigation position now carries a direct financial consequence it did not before. Businesses currently in, or considering, an opposition or section 45 proceeding should factor these procedural tools into strategy from the outset, not after the fact.
We advise clients on both sides of Canadian trademark opposition and section 45 proceedings, including how these newer procedural tools, costs exposure, confidentiality orders, and case management, bear on strategy.