In a Practice Notice published April 1, 2025, the Canadian Intellectual Property Office (CIPO) issued guidance on the new framework for awarding costs in proceedings before the Trademarks Opposition Board. This Practice Notice accompanies changes to the Trademarks Act and the Trademarks Regulations that came into force on the same day (previously discussed here).
According to the Practice Notice, cost awards are "intended to curtail inefficient behaviors," signaling a shift toward greater procedural efficiency. It further clarifies that cost awards are not meant to limit participation in proceedings and will therefore only be awarded in "exceptional cases."
The Practice Notice describes four exceptional situations under which costs may be awarded (as set out in the Trademarks Regulations):
- Bad Faith Applications: Where a party's trademark application is refused on the grounds that it was filed in bad faith with respect to one or more of the listed goods or services.
- Divisional Applications: Where a party files a divisional application on or after the original application has been advertised under section 37(1) of the Trademarks Act, and costs are awarded in relation to the divisional application.
- Late Hearing Withdrawals: Where a party withdraws a request for a hearing less than 14 days before the scheduled hearing date.
- Unreasonable Conduct: Where a party engages in unreasonable conduct that causes undue delay or unnecessary expense in the proceeding.
The Practice Notice also outlines important timing requirements, effective dates, and limitations on the quantum of costs.
Timing Requirements:
A request for costs must be submitted within 14 days of the end or cancellation of a hearing, or within 14 days of the expiry of the period to request a hearing. The Registrar may grant a single 14-day extension to file the request.
Effective Date:
The Registrar's authority to award costs is not retroactive. The conduct in question must have occurred on or after April 1, 2025.
Quantum of Costs:
The amount awarded is limited to a multiple of the prescribed fee for filing a statement of opposition.
The full text of the Practice Notice is available here.
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