Key Trademark Developments and Practical Guidance for 2025

The past year has brought significant changes and clarifications in Canadian trademark law. This article highlights the most notable developments providing insights to help trademark owners and practitioners navigate the shifting landscape. 

Acquisition

The Trademarks Act does not provide a form of evergreening based on an abandoned application that does not reflect any use of the mark Sea Tow Services International Inc. v. C-Tow Marine Assistance Ltd 2025 FC 27 Ltd 2025 FC 27. The decision is also helpful concerning the evidence required to establish a chain of title for the ownership of a mark. A more detailed comment about this decision is available at the blog post Better than a Sea Cruise?

Specificity of Goods and Services 

The CIPO Goods and Service Manual can help to determine the appropriate Nice class. The Manual is available on the CIPO website.

CIPO has released Specificity Guidelines for goods and services. These guidelines are designed to supplement the additional notes found for retired terms in the Goods and Services Manual and section 2.4.5 of the Trademarks Examination Manual.

The Dangers of Deviating Use

In The University of British Columbia v. Sage Dining Services Inc.2025 FC 1176 the decision turned on whether UBC was using its SAGE & Design Mark. The Judge found that UBC was using another distinct mark. A consumer on viewing this presentation would perceive the registered mark as a separate trademark. A more detailed comment about this decision is available at Be Cautious When Using a Variant of a Registered Trademark.

S45 Proceedings

The Trademarks Opposition Board has started a pilot project where the Registrar of Trademarks will send a limited number of section 45 notices monthly. The project is designed to help provide insight into how many registered trademarks are no longer in use. This is in line with the Registrar’s priority of making sure the Register of Trademarks accurately reflects trademarks that are in use, and in association with the goods and services listed in the registration. See practice notice on The Government of Canada website.

Special Circumstances and the New Owner

When a new owner acquires a mark during the relevant period, the special circumstances analysis may focus on whether the absence of use is excused during the part of the relevant period that follows the acquisition. However, this approach does not apply where the acquisition is after the relevant period. 

The principle behind this approach is that the recent acquisition of a trademark may give rise to special circumstances such that, in responding to a notice under subsection 45(1), the new owner need not account for a period of non-use pre-dating the acquisition. In such circumstances, the task of the new owner of a registered trademark is to establish special circumstances for non-use in the limited period from acquisition to the date of issuance of the notice. Centric Brands Holding LLC v. Stikeman Elliott LLP 2025 FCA 16. A more detailed comment about this decision is available at the blog post New Owner Jurisprudence in Section 45 Proceedings: A Fairer Approach .

Costs in Section 45 Proceedings 

The Registrar may after April 1, 2025, on request, award costs against a party to a proceeding under section 45 of the Act in the following amounts:

(a)  where the party withdraws a request for a hearing less than 14 days before the day on which the hearing is scheduled to take place, an amount two times the fee for a request that a notice be given under subsection 45(1) of the Act, ($1,190.12), or

(b)  where the party engages in unreasonable conduct that causes undue delay or expense in the proceeding, an amount five times the fee for a request that a notice be given under subsection 45(1) of the Act, ($2,975.30).

Parties to a section 45 proceeding are not subject to cost awards for acts that took place before the coming into force of the amended regulations on April1, 2025.

A request by a party that costs be awarded must be filed using the online service designated by the Registrar and must specify the reasons for the request and the circumstances for which costs are sought. 

The Registrar must give the other party notice of the request for costs and an opportunity to make written representations, which must, within 14 days after the day on which the notice is given, be made using the online service designated by the Registrar as being accepted for that purpose.

Confusion 

In Yat Sun Food Products Ltd. v. Griffith Foods International Inc. 2025 FC 1688 a detailed review of the nature of the goods and business and the trade factors was carried out. The judge concluded that the nature of the goods and business factor favoured the appellant bearing in mind that both parties’ food products businesses encompass a wholesale component. In addition, the nature of the trade factor favoured the appellant given the overlapping channels of trade and customers, in the wholesale channel, as shown by the appellant’s new material evidence. Taking all the subsection 6(5) factors into account, including the reconsidered factors based on the appellant’s new material evidence, the likelihood of confusion balance tipped in favour of the appellant. A more detailed comment about this decision is available at the blog post Trademark Confusion and Nature of the Parties’ Goods and Business and Trade.

The Relevant Consumer 

The hurried consumer standard always applies but the relevant consumer is the consumer in the market in question. 2K4 Inc. v. Indiecan Entertainment Inc 2025 FC 20.  

Composite Marks 

In a confusion analysis rather than automatically giving more weight to the first word of a compound mark, a preferable approach is to first consider whether an aspect of the trademark is striking or unique. If that part of the respective marks is dominant and common to both this may justify a finding of confusion. As mandated by the Supreme Court, a trial judge should view the mark as a whole and consider all its “dominant” and “most striking” features. 

The above approach does not preclude the first word of a trademark from being the most striking or unique part of a trademark. However, it did away with the presumpition or default approach that the first word is the most important when assessing the degree of resemblance between trademarks. Neither an expert, nor a court, should tease out and analyze each part of a mark alone. A judge should consider the marks, each as a whole, but having regard to the dominant or most striking or unique feature of the trademark. T Rowe Price Group, Inc. v. Glidepath Technologies Inc. 2025 FC 179. A more detailed comment about this decision is available at the blog post Trademarks Must be Assessed as a Whole.

Oppositions 

Domestic Law 

Questions of domestic law (as opposed to foreign law) are not matters on which a court will receive opinion evidence. Remitbee Incorporated v. Remitly 2025 FC 81. 

Resetting the Relevant Date 

The date for considering confusion under paragraph 12(1)(d) of the Act is the date of the Board’s decision. However, where additional evidence is filed that would have materially affected the Board’s findings of fact or exercise of discretion, the Court must decide the issue de novo considering all the evidence before it. In such circumstances, the date for considering confusion under paragraph 12(1)(d) “resets” to the date of the Court’s decision.

The judge said it would be contrary to the interests of justice to undertake a review of the Board’s decision — be it on an appellate standard of review or a de novo review — and not consider whether the opponent’s mark remained in good standing at the time of the Court’s decision, as a proposed mark cannot be confusing with a registered mark that has been expunged.  As such the new evidence was material. GRC Food Services Ltd. v. Chocoladefabriken Lindt & Sprüngli AG 2025 FC 940 A more detailed comment about this decision is available at the blog post A Sweet Case.

Bad Faith

The Essence

The essence of an objection based in bad faith is that the motive or intention of the applicant was to engage in conduct that departed from accepted principles of ethical behavior or honest commercial practices, having regard to the purposes of the trademark system. Whether the conduct was undertaken with that motive or intention and departed from such practices must be assessed having regard to all the objective circumstances of the case. Sky Limited v Skykick UK LTD [2024] UKSC 36. 

Proving It

It may be difficult for the attacking party to prove the subjective intention or motive of the applicant. It has been recognised this subjective part of the objection must generally be established by reference to relevant, consistent and objective criteria. But it remains open to an applicant or registrant faced with such a case to try to rebut it by explaining its purpose and intention in making the application as it did and why it was not made in bad faith. Sky Limited v Skykick UK LTD [2024] UKSC 36. 

Leave to Adduce New evidence on Appeal

Effective April 1, 2025, there is no longer an automatic right to file new evidence and leave is required. The Act as amended provides that if, on an appeal the Federal Court grants leave to adduce evidence, in addition to that adduced before the Registrar, the Court may exercise, with respect to that additional evidence, any discretion vested in the Registrar. It remains to be seen what must be shown to obtain leave.

Appeal

Palpable and Overriding Error 

In G6 Hospitality IP LLC v. Sandals Resorts International 2000 Inc. 2025 FC 1430 the appellant argued that the Hearing Officer committed an extricable error of law or a palpable and overriding error of mixed fact and law in assessing degree of resemblance under subsection 6(5)(e). Assessing the degree of resemblance under subsection 6(5)(e) is a question of mixed fact and law. The Hearing Officer’s determination must be reviewed for palpable and overriding error as the Hearing Officer did not commit an error in characterizing the relevant legal principles. The appellant did not show the Hearing Officer made an extricable error of law in applying the principles to the facts. A more detailed comment about this decision is available at the blog post  Carefully Consider an Appeal from the T.M.O.B.

A Direction from the Federal Court of Appeal 

The Federal Court of Appeal has firmly stated the law concerning the standard of review on appeals to it. Patel v. Dermaspark Products Inc. 2025 FCA 145. To succeed on appeal, the appellants must show an error in law, an error in an extricable question of law on an issue of mixed fact and law, or palpable and overriding error on a question of fact or a factually suffused question of mixed law and fact.

Questions of mixed fact and law are those where appellate courts apply the law to the facts including discretionary questions where courts apply legal standards to a set of facts.

When legal questions predominate or fundamentally taint a question of mixed fact and law this is “an extricable question of law”. When there is an extricable question of law, the appellate court can examine that question of law and decide it on a standard of correctness—i.e., with no deference at all to the trial court. 

Where legal questions are not extricable, i.e. do not predominate or fundamentally taint the question of mixed fact and law—where the question of mixed fact and law is factually suffused or the facts predominate—the appellate court can interfere only for palpable and overriding error.

Palpable means obvious and overriding means capable of changing the result of the case. As a practical matter, these two things seldom happen together. Reversal on this ground is rare.  Palpable and overriding error is a highly deferential standard of review. A more detailed comment about this decision is available at the blog post A Directive from the Federal Court of Appeal.

Costs in Opposition Proceedings

Under section 58.1 in force April 1, 2025, the Registrar may, on request, award costs against a

party to an opposition proceeding in the following amounts:

(a)  where the party’s application for the registration of a trademark is refused on the ground that it was filed in bad faith with respect to one or more of the goods or services, an amount ten times the fee for filing a statement of opposition ($11,150.80),

(b)  where the party files a divisional application on or after the day on which the original application is advertised under subsection 37(1) of the Act, an amount two times the fee filing a statement of opposition, ($2,230.16),

(c)  where the party withdraws a request for a hearing less than 14 days before the day on which the hearing is scheduled to take place, an amount two times the fee for filing a statement of opposition, ($2,230.16), or

(d)  where the party engages in unreasonable conduct that causes undue delay or expense in the proceeding, an amount five times the fee for filing a statement of opposition, ($5,575.40.)

Parties to an opposition are not subject to cost awards for acts that took place before the coming into force of the amended regulations.

A request by a party that costs be awarded must be filed using the online service designated by the Registrar and must specify the reasons for the request and the circumstances for which costs are sought. The request for costs must be filed

(a)  where a party has filed a request for a hearing within 14 days after the day on which the hearing ends or within 14 days after the day on which the Registrar notifies the parties that the hearing has been cancelled, or

(b) in any other case, within 14 days after the end of the one-month period for filing a request for a hearing under subsection 58(1).

The Registrar must give the other party notice of the request for costs and an opportunity to make written representations, which must, within 14 days after the day on which the notice is given, be made using the online service designated by the Registrar as being accepted for that purpose.

A Trademarks Opposition Board practice notice deals with cost awards, Practice notice on cost awards at The Goverment of Canada websitie.

Confidentiality Orders

A party to a proceeding under section 11.13, 38 or 45 of the Act who makes a request to the Registrar under subsection 45.1(1) of the Act for an order that evidence be kept confidential must submit the following information to the Registrar:

(a) a description of the evidence that the party wishes to be kept confidential,

(b) a statement that the evidence has not been made public,

(c) the reasons why the evidence should be kept confidential,

(d) an indication of whether the other party consents to the request, and

(e) any other information that the Registrar requires to make a decision with respect to the request.

In deciding whether to make a confidentiality order under the subsection the Registrar must consider the public interest in open and accessible proceedings. A party who submits information to the Registrar that is subject to a confidentiality order must make sure the information is designated as confidential.

Case Management

The Registrar may, at any time in a proceeding under section 11.13, 38 or 45 of the Act, designate the proceeding as a case-managed proceeding subject to any terms that the Registrar considers appropriate.

In determining whether to designate a proceeding as a case-managed proceeding, the Registrar must consider all the surrounding circumstances, including

(a) the extent of intervention by the Registrar that the proceeding is likely to require for matters to be dealt with in an efficient and cost-effective manner,

(b) the nature and extent of evidence,

(c) the complexity of the proceeding,

(d) whether the parties are represented,

(e) the number of related files, and

(f) whether substantial delay has occurred or is anticipated to occur in the conduct of the proceeding. 

The Registrar may fix the time by which or the way any step in a case-managed proceeding is to be completed, despite any time or manner provided for under the Act regarding the proceeding^.

Limiting Relief if the Trademark has Not Been Used Within Three Years Of Registration 

Section 53.2(1.1), in force April 1, 2025, limits relief if the trademark has not been used within three years of registration. The section states that 

1. If, within a period of three years beginning on the date of registration of a trademark, the owner of the registered trademark makes an application claiming that an act has been done contrary to section 19, 20 or 22, the owner is not entitled to relief unless the trademark was in use in Canada at any time during that period or special circumstances exist that excuse the absence of use in Canada during that period.

   
   

Interlocutory Injunctions

The test for granting an interlocutory injunction is well established. The plaintiffs must show: (i) a serious issue to be tried in the underlying claim; (ii) they will suffer irreparable harm if an injunction is not granted; and (iii) the balance of convenience favours granting the injunction.

If a mandatory interlocutory injunction is sought the criterion for assessing the strength of the applicant’s case is whether the applicant has shown a strong prima facie case. A mandatory injunction directs the defendant to undertake a positive course of action, such as taking steps to restore the status quo, or to otherwise restore the situation back to what it should be, which is often costly or burdensome for the defendant and which equity has long been reluctant to compel. Schlegel Health Care Inc. v. Edgewood Health Network Inc. 2025 FC 1639. A more detailed comment about this decision is available at  the blog post The Guardians Case/ A Cautionary Tale in Seeking Interlocutory Relief.

Actions for Infringement

Grey Market Goods

It is well established in Canada the sale in Canada of grey market goods is not passing off nor a violation of the Trademarks Act. In addition, many recent decisions of the Federal Court have said use is an essential requirement for a claim of passing under paragraph 7(b). The Associate Judge erred in his conclusion on this point. Toyota Jidosha Kabushiki Kaisha (Toyota Motor Corporation) v. Marrand Auto Inc. 2025 FC 1105. A more detailed comment about this decision is available at the blog post Grey Marketing Revisited.

Competing Pharmaceutical Products

In Novartis AG v. Biogen 2024 FC 52, 2025 FCA 212 the plaintiff successfully sued for infringement of its registered trademark and passing off for a pharmaceutical preparation for ophthalmology and pharmaceutical preparations for prevention and treatment of ocular disorders and diseases. The decision and subsequent appeal clarify that in the context of competing pharmaceutical products patients have a choice and should be considered. This conclusion is supported by strong policy reasons that patients should have the protection of the Act. In addition, this approach is inconsistent with the concern that in this context that care must be taken to prevent the possibility of confusion. A more detailed comment about this decision is available at the blog post Federal Court of Appeal Confirms Patients Are Relevant Consumers in a Trademark Confusion Analysis for Competing Pharmaceutical Products.

If you have questions, please contact me at jmckeown@Ln.Law 

John McKeown

Loopstra Nixon LLP.  

130 Adelaide St W Suite 2800Toronto, Ontario, M5H 3P5Canada

jmckeown@Ln.Law

416-746-4710

This article is of general nature and is not intended to provide specific legal advice as individual situations will differ. Specialist advice should be sought about your specific circumstances. 

If you have questions, please contact me at jmckeown@Ln.Law

John McKeown

Loopstra Nixon LLP.  

130 Adelaide St W Suite 2800

Toronto, Ontario,

M5H 3P5

Canada

jmckeown@Ln.Law

437.290.5960

This article is of general nature and is not intended to provide specific legal advice as individual situations will differ. Specialist advice should be sought about your specific circumstances.