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2024-2026 Forward Regulatory Plan – Canadian Intellectual Property Office

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Amendments to the Trademarks Regulations

Enabling act

Trademarks Act, sections 65 and 65.3

Description

The regulatory amendments in this proposal result from amendments to the Trademarks Act introduced under Bill C-86, the Budget Implementation Act, 2018, No. 2. In particular, Bill C-86 amended the Trademarks Act by giving five new authorities to the Registrar of Trademarks (the Registrar) to be exercised in the context of proceedings before the Trademarks Opposition Board (TMOB) and in relation to official marks. With these authorities, the Registrar will be empowered to:

  1. case-manage cases before the TMOB to streamline proceedings;
  2. grant confidentiality orders to protect personal and commercially sensitive information submitted as evidence before the TMOB;
  3. award costs against bad actors involved in proceedings before the TMOB;
  4. treat an opposition or objection proceeding as withdrawn; and
  5. on his or her own initiative or upon receipt of a request of a person who pays the prescribed fee, give public notice that subparagraph 9(1)(n)(iii) of the Act does not apply with respect to a particular official mark if the relevant entity that made the request for the public notice is not a public authority or no longer exists.

The proposed regulatory amendments will also provide for a prescribed fee to request the withdrawal of the public notice of an official mark.

Regulatory cooperation efforts (domestic and international)

The proposal is unrelated to a work plan or commitment under a formal regulatory cooperation forum.

Potential impacts on Canadians, including businesses

In general, the proposed amendments are expected to prevent or mitigate bad faith and abusive practices relating to the enforcement of intellectual property rights, and improve the efficiency of proceedings before the TMOB.

Costs for users of the trademark system are to be expected in connection with the Registrar's new authorities to award costs and to withdraw public notices for official marks. The Registrar will award costs, akin to an administrative fine, to individuals or businesses involved in proceedings before the TMOB who behave unreasonably, and a prescribed fee will be required to request the withdrawal of the public notice of an official mark.

The key stakeholders that could be impacted by the proposed amendments are Canadian trademark owners (individuals or businesses) or those planning to apply for the registration of a trademark in Canada, official mark holders, as well as trademark agents who practice in the area of trademark law. In addition, any member of the public with an interest in the registration of trademarks may be interested in these changes.

Consultations

Publication in Canada Gazette, Part I of the coordinating amendments to the Trademarks Regulations is anticipated to occur in 2024.

Further information

The Government of Canada's Intellectual Property (IP) Strategy aims to ensure innovators have easier access to an IP regime that can help them grow. A section of this strategy includes updating Canada's IP legislation to reduce barriers for businesses, clarify acceptable practices and prevent the misuse of IP rights. Making the corresponding amendments to the Trademarks Regulations is consistent with the goals of the IP Strategy.

Canada's IP strategy

Departmental contact information

Canadian Intellectual Property Office

If you wish to contact the department please use the following address: cipoconsultations-opicconsultations@ised-isde.gc.ca

Date the regulatory initiative was first included in the Forward Regulatory Plan

April 2021


Amendments to the Patent Rules and other consequential amendments

Enabling act

Patent  Act

Description

Amendments were recently made to the Patent Act (the Act) to enable Canada to comply with obligations under Article 20.44 of the Canada-United-States-Mexico Agreement (CUSMA). Under these obligations, patent applications filed after the date of entry into force of the agreement or two years after the signing of the agreement, whichever is later, may be eligible for additional term if there are unreasonable delays in the granting of the patent. Amendments would be made to the Patent Rules to accompany the changes to the Act. Consequential amendments would also be made to other regulations falling under the purview of the Act to account for the availability of additional term.

The proposed amendments would also include various housekeeping amendments to the Patent Rules.

Potential impacts on Canadians, including businesses

Stakeholder groups or sectors that may be affected by the introduction of an additional term for a patent include the general public; patent applicants and patentees; Canadian businesses; and intellectual property agents.

Regulatory cooperation efforts (domestic and international)

This initiative delivers on a CUSMA commitment.

ISED will consider the regimes of relevant international counterparts when developing the regulatory proposal.

Consultations

A public, pre-consultation with stakeholders, prior to Canada Gazette, Part 1, informed the development of the regulatory proposal.

Publication in Canada Gazette, Part I of the coordinating regulatory amendments is planned for 2024.

The final amendments to the regulatory proposal are anticipated to be published in the Canada Gazette, Part II in the fall of 2024.

Further information

The Government of Canada intends to make changes to Canada's IP system to meet its obligation under CUSMA. Article 20.44 of CUSMA requires that Canada make best efforts to process patent applications in an efficient and timely manner, with a view to avoiding unreasonable or unnecessary delays in their issuance, and that if there are unreasonable delays Canada must provide the means to adjust the patent term to compensate for those delays.

CUSMA – Intellectual Property Chapter Summary

Departmental contact information

Canadian Intellectual Property Office

Virginie Ethier
Director General
Patent Branch
Virginie.Ethier@ised-isde.gc.ca

Marketplace Framework Policy Branch

Erin Campbell
Director
Patent Policy Directorate
Erin.Campbell2@canada.ca

The date the regulatory initiative was first included in the Forward Regulatory Plan

This item was first included in the 2022-2024 Forward Regulatory Plan.


Consult ISED's Acts and Regulations web page for:

  • a list of acts and regulations administered by ISED
  • further information on ISED's implementation of government-wide regulatory management initiatives

Consult the following for links to the Cabinet Directive on Regulation and supporting policies and guidance, and for information on government-wide regulatory initiatives implemented by departments and agencies across the Government of Canada:

To learn about upcoming or ongoing consultations on proposed federal regulations, visit: