In Chwaja v. 0710674 BC Ltd. (Cottonmouth), 2025 FC 312, the appellant appealed a decision of the Trademarks Opposition Board (TMOB) denying reinstatement of his trademark application that was deemed abandoned under section 38(11) of the Trademarks Act.

Prior to the appeal, the appellant’s trademark application was opposed by the respondent and the application was deemed abandoned because the appellant failed to file a counter statement by the relevant deadline. After the application was deemed abandoned, the appellant requested that the application be reinstated, but the TMOB noted that it did not have jurisdiction to revive the application after it was deemed abandoned.

On appeal to the Federal Court, the appellant contended that the TMOB could grant a retroactive extension of time and revive the application, while the respondent argued that the TMOB was functus officio after deeming the application abandoned. As discussed by the Court, “the doctrine of functus officio holds that a decision maker, having reached a final decision in respect of a matter, cannot revisit that decision, subject to only limited exceptions”.

While the Court noted that the issue of the TMOB’s jurisdiction was outside the scope of the appeal, it nevertheless discussed the issue after holding that the TMOB did not err in deeming the application abandoned due to the appellant’s failure to file a counter statement by the deadline.

On the issue of the TMOB’s jurisdiction, the Court stated that “the jurisprudence is clear that trademark applications, once refused, cannot be revisited by the decision maker after a final decision has been made” and “[t]he preponderance of this Court’s jurisprudence is to the effect that a retroactive extension of time under the Act cannot be considered once the Registrar is functus officio”.

The decision can be found here.

On 24 March 2025, the Trademarks Opposition Board (the “TMOB”) refused a trademark application for the mark “Robin Hood” because it was considered confusing with the previously registered trademark ROBINHOOD owned by Robinhood Markets Inc., the maker of the popular securities trading app in the United States.

The Applicant, Robin Hood Inc., had filed an application for the mark “Robin Hood” in association with goods and services relating to a wide variety of electronic devices, office products, and business services. The Opponent, Robinhood Markets Inc., owned a registration for the mark ROBINHOOD. The statement of opposition filed by the Opponent alleged that, among other things, the Applicant’s trademark was confusing with the Opponent’s registered trademark.

In its decision, the TMOB reviewed the factors for confusion set out in s. 6(5) of the Trademarks Act. The TMOB concluded that the Applicant’s trademark and the Opponent’s trademark were confusing given the high degree of resemblance between the marks, the length of time of use of the Opponent’s mark, and the extent to which the Opponent’s mark had become known in Canada.

Of note, the Applicant had submitted a document entitled “Statutory Declaration of Tanuj Sethi” as part of its evidence. However, there was no indication that the document was sworn or solemnly affirmed before a commissioner for taking affidavits. Therefore, the document was not considered by the TMOB.

This decision is a reminder to trademark owners to stay vigilant and take action against any activities by third parties that might affect the distinctiveness of their trademarks.

A copy of the decision is available here.

The Federal Court recently issued a decision in the case of Aria Vent Inc. v. 2213785 Ontario Inc. and TRM Holdings Inc., 2025 FC 672 that reinforces the importance of carefully handling settlement negotiations.

After the breakdown of settlement negotiations, the defendants sought an order from the Federal Court to enforce a settlement agreement between the parties based on the settlement negotiations.

The Federal Court found that despite the defendants’ having attempted to pay the agreed settlement amount, the defendants’ failed to “unequivocally” accept other non-monetary essential terms of the settlement.

This case should serve as a reminder to litigants that the Federal Court can declare that a settlement has been reached in the absence of an executed settlement agreement, but that the Federal Court will only do so when acceptance of all essential terms of the settlement agreement can been demonstrated.

Click here to read the full decision.

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):

1. 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.
2. 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.
3. Late Hearing Withdrawals: Where a party withdraws a request for a hearing less than 14 days before the scheduled hearing date.
4. 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.

As mentioned in our previous posts (here and here), amendments to the Canadian Trademarks Act and Trademarks Regulations came into force on 1 April 2025.

The amendments included a new mechanism for challenging official marks that are owned by entities that no longer exist or are not public authorities.

On 1 April 2025, the Canadian Intellectual Property Office (“CIPO”) released a practice notice detailing CIPO’s practice with respect to this new mechanism.

In brief, requesting parties are now able to submit requests to the Registrar of Trademarks to give public notice that s. 9(1)(n)(iii) of the Trademarks Act (which prohibits the adoption of any mark consisting of, or so nearly resembling as to be likely mistaken for, an official mark) does not apply to a particular official mark. Upon payment of the prescribed fee (currently $325), the Registrar will review the request.

The Registrar may refuse the request in certain circumstances, but otherwise will send a notice to the public authority requesting that it provide evidence of its public authority status. Such evidence must be provided within 3 months (subject to extensions of time in exceptional circumstances).

If the holder of the official mark fails to provide evidence, the Registrar will then give public notice that s. 9(1)(n)(iii) of the Trademarks Act does not apply with respect to that mark.

The practice notice is available here.

Ecolab USA Inc. (the “Plaintiff”) was partially successful in establishing infringement, depreciation of goodwill, and passing off of its registered trademark ECOLAB by 2431717 Ontario Inc., which carried on business under the name 3D Eco Chemical Labs Canada (the “Defendant”). The Defendant had used a series of trade names and trademarks that included 3D ECO LAB, 3D ECO LABS, 3D ECO CHEMICAL LABS CANADA, 3D ECO CHEMICALS LABS CANADA, and a design mark comprising 3D ECO CHEMICAL LABS CANADA. Both the Plaintiff and the Defendant sold cleaning and disinfecting products.

The Defendant failed to file a Statement of Defence or any other documents in the proceeding.

The Court held that the Plaintiff had provided sufficient evidence to establish infringement, passing off, and depreciation of goodwill of its registered trademark in relation to the Defendant’s use of the marks 3D ECO LAB and 3D ECO LABS, but not with respect to the other trademarks and trade names used by the Defendant. The Court granted injunctive relief and delivery up or destruction of material with respect to those marks, as well as transfer of the domain name www.3decolabs.com to the Plaintiff.

The Court also reviewed past decisions on ordering compensatory damages in default judgment cases, where the plaintiffs were deprived of discovery and the ability to determine the scope of a defendant’s infringement and profits. Based on this review and having regard to the duration of the infringing activities and the Plaintiff’s sales during that period, the Court awarded $15,000 in compensatory damages.

The full decision is reported here.

In Poseidon, LLC v. Canada (Commissioner of Patents), 2025 FC 225, Poseidon, LLC (“Poseidon”) sought an order under section 22 of the Industrial Design Act (the “Act”) to reinstate two of its industrial design registrations that expired due to failure to pay maintenance fees. Poseidon contended that the registrations expired because of errors on the part of the Canadian Intellectual Property Office (CIPO).

Since Poseidon’s registrations were registered in 2015, the previous version of the Act applied in this case. The current version of the Act came into force in 2018. However, section 22 was not amended as between the previous and current versions of the Act. Section 22 of the Act provides:

22(1) The Federal Court may… at the suit of any person aggrieved by any omission without sufficient cause to make any entry in the Register of Industrial Designs, or by any entry made without sufficient cause in the Register, make such order for making, expunging or varying any entry in the Register as the Court thinks fit, or the Court may refuse the application.

The Court noted that “there is little jurisprudence on a proceeding under section 22 in the circumstances of this case – namely a party seeking to reinstate registrations that expired due to the non-payment of maintenance fees”. In this regard, the Court applied an earlier decision in deciding to treat the proceedings under section 22 of the Act like an appeal under section 56 of the Trademarks Act, thus allowing the Court to consider new evidence. Notably, the Court concluded that:

Based upon the direction in Rothbury, Hilton and Clorox and the wording of section 22, I accept that the Court has jurisdiction to rectify an entry in the Register of Industrial Designs that is made “without sufficient cause” if there is material new evidence that is “sufficiently substantial and significant” and “of probative value” (Clorox at para 21; Hilton at para 53). Meaning that if the “expired” notation was made “without sufficient cause” and there is material new evidence to support a “without sufficient cause” finding, then section 22 gives the Court jurisdiction to rectify the Register.

In reviewing the evidence in this case, the Court stated that it did not find evidence that the maintenance fees were paid and that the evidence showed that the failure to pay the fees was due to human error on the part of Poseidon’s agents and not due to any failure of the CIPO’s processes or systems. Accordingly, the Court concluded that there was no material new evidence to support a finding that it should exercise its jurisdiction under section 22 to rectify the Register, and dismissed the action.

This decision provides guidance in the scope and operation of section 22 of the Act and how an expired industrial design registration may, in certain circumstances, be potentially reinstated under this provision.

The decision can be found here.

In a decision issued on 16 December 2024 in Limbic Media Corporation v. Lutron Electronics Co., Inc. 2024 FC 2041, the Federal Court held that use of a trademark in advertisements was not sufficient to show use of a trademark for goods.

Limbic Media Corporation owned a registration for the trademark AURORA for use in relation to “electric lighting fixtures”. At the request of Lutron Electronics Co., Inc., the Registrar of Trademarks issued a notice under section 45 of the Trademarks Act requiring that Limbic show use of the trademark in Canada within the preceding 3 years. In response to the notice, Limbic provided a statutory declaration depicting screenshots from its website.  In a decision issued 26 February 2024, the Registrar of Trademarks ordered the registration expunged, noting that displaying the trademark on Limbic’s website was not enough to demonstrate trademark use, as the Registrar could not infer that customers were able to purchase the goods from the website.

In an appeal before the Federal Court, Limbic argued that the combination of Internet evidence, invoices, and sales reports demonstrated sales in Canada and that the trademark was associated with the goods.

The Federal Court dismissed the appeal and noted that although the evidence showed that sales occurred in Canada, Limbic did not demonstrate that the trademark was associated with the goods at the time of transfer of the property or possession of its products. Displays of the trademark on the website may be used as evidence of use only if customers are able to purchase goods on the website. Otherwise, website displays may be considered mere advertisements for the goods. It was also noted that an invoice may establish use of the mark in association with the goods, but only if the evidence shows that the invoice accompanied the goods at the time of transfer.

The Trademarks Opposition Board (the “TMOB”) has refused trademark applications for the marks AGX and AGX COIN because they were considered to be confusing with previously registered trademarks for the mark AGF.

The Applicant, LODE Global Corporation, had filed applications for the marks AGX and AGX COIN in association with goods and services relating to digital and virtual currency. The Opponent, AGF Management Limited, owned registrations for various AGF marks in association with financial services, including the management of investment and mutual funds. The statements of opposition filed by the Opponent alleged that the Applicant’s trademarks were confusing with the Opponent’s AGF trademark registrations.

In its decision, the TMOB reviewed the factors for confusion set out in s. 6(5) of the Trademarks Act. The TMOB concluded that the AGX marks and the AGF marks were confusing given the high degree of resemblance between the marks, the longstanding and extensive use of the Opponent’s AGF marks, and the overlap in the nature of the parties’ goods and services.

Regarding the degree of resemblance between the marks, the TMOB was of the view that none of the marks possess a particularly striking or unique aspect to them and that the marks’ similarities outweighed their differences.

In terms of the nature of the parties’ goods and services, the TMOB noted that it was ultimately the statement of goods and services in the Applicant’s applications and the Opponent’s registrations that govern the assessment of the likelihood of confusion. The TMOB concluded that there were no restrictions in the statement of goods and services in the Opponent’s registrations that would rule out the Opponent’s ability to incorporate technologies similar to those of the Applicant in the Opponent’s provision of its financial services.

A copy of the decision is available here.

The Trademarks Opposition Board (the “TMOB”) has refused a trademark application for DOGKIND because it was considered confusing with a previously registered trademark for PETKIND.

The Applicant, Dogkind Services Inc., applied for the DOGKIND mark in association with pet-related services. PetKind Pet Products Inc., the Opponent, owned a registration for the trademark PETKIND, which was registered in association with pet-related goods and services.

Upon the DOGKIND application being advertised, a statement of opposition was filed by the Opponent alleging, inter alia, that the Applicant’s trademark was confusing with the Opponent’s PETKIND trademark registration.

In its decision, the TMOB reviewed the factors for confusion laid out in s. 6(5) of the Trademarks Act. Although the TMOB acknowledged that the case was “at best, borderline”, particularly given the lack of inherent distinctiveness of the marks at issue and the limited evidence of use provided by the Opponent, the TMOB nonetheless concluded that PETKIND and DOGKIND were confusing with each other. The TMOB concluded that there was confusion due to the degree of similarity between the two marks (given the similarity in ideas suggested by the prefixes DOG- and PET- in the two marks), as well as the similarity between the goods and services at issue.

The decision is a reminder of the fact-specific nature of determining whether two trademarks are confusing with each other. It is also an important reminder of the drawbacks of selecting a trademark with a low degree of inherent distinctiveness.

A copy of the decision is available here.