Amendment to the Canadian Trademarks Act Aiming to Prevent the Misuse of the Registration Process

Sanctioned on December 13, 2018, the Budget Implementation Act, 2018, No. 2 includes amendments to the Canadian Trademarks Act.

Among others, the bill amends the Trademarks Act by providing the Registrar with additional powers in the conduct of various proceedings before the Registrar. 

One of these additional powers is the Registrar’s authority to treat an opposition as withdrawn by reason of the opponent’s failure to respond to a notice of default issued pursuant to the new section 36.1 of the Trademarks Act, which will come into force by order of the Governor in Council.

Indeed, under the current Trademarks Act, an opponent cannot be considered in default in the continuation of an opposition because of its failure to reply to a notice. The provisions of section 36 with respect to the issuance of a notice of default apply only to a notice sent to an applicant.  

While the proposed addition of section 36.1 seems to pass under the radar, it is consistent with amendments aiming to prevent the misuse of the trademark registration system. For instance, in a case where the opponent elected not to furnish evidence, not to file a written argument and not to request a hearing, the Registrar could send a first notice requiring the opponent to confirm its interest in the opposition. The absence of a reply from the opponent could ultimately result in the opposition being treated as withdrawn unless the opponent’s default is remedied within the time specified in a subsequent notice issued under the added section 36.1 of the Act.