- in Canada
- with readers working within the Oil & Gas industries
- with Inhouse Counsel
Since April 1, 2025, the Trademarks Regulations has permitted the Registrar to order costs, on request, against a party in summary trademark expungement proceedings (also known as Section 45 proceedings) where a party's unreasonable conduct causes undue delay or expense.
In Nelligan O'Brien Payne v. Amy French, the Registrar identified one type of conduct that may meet that threshold.
The Registrar flagged multiple inaccurate case citations in one of the parties' written submissions that did not support the principles relied upon.
The Registrar warned that such errors, regardless of whether they are made inadvertently, including due to the use of unverified generative AI outputs, cause misunderstanding while wasting time and resources, potentially leading to a miscarriage of justice. Therefore, such conduct can result in an award of costs against the responsible party, even if it did not deliberately attempt to mislead.
The decision refers to a number of authorities from Canadian courts and establishes how reliance on non-existent or inapplicable citations can be prejudicial and may attract cost awards in proceedings before the Trademarks Opposition Board.
However, as no request for costs was submitted in this case, no order for costs was ultimately made.
The decision can be found here.
The Registrar may award costs for misleading or unverified authorities in TMOB proceedings
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
