The federal government has announced that recent amendments to the Trademarks Act and the Trademarks Regulations (discussed previously here) will come into force on 1 April 2025.

Significant changes include:

• a requirement to show use in order to enforce a trademark registration within the first three years after registration, unless special circumstances exist to excuse the absence of use;
• a mechanism to remove official marks that are owned by entities that no longer exist or are not public authorities;
• the ability of the Registrar to award costs in opposition, section 45 and objection proceedings;
• the ability of parties to request confidentiality orders in opposition, section 45 and objection proceedings;
• the ability of the Registrar to order case management in opposition, section 45 and objection proceedings; and
• the removal of the automatic right to file additional evidence in appeals of the Registrar’s decisions at the Federal Court.

The full list of amendments to the Trademarks Regulations may be found here.

The Alberta Court of Appeal has clarified the applicable limitation period for patent infringement claims commenced in Alberta courts in its recent decision of JL Energy Transportation Inc. v. Alliance Pipeline Limited Partnership, 2025 ABCA 26.

In this case, the Court of King’s Bench had applied a two-year provincial limitation period to the action and dismissed the case on a summary basis. However, the Court of Appeal held that the six-year limitation period under Section 55.01 of the Patent Act applied to patent infringement claims, regardless of whether the case is brought in provincial or federal court. This decision overturned an earlier 2024 Alberta Court of Appeal decision that had applied a two-year provincial statutory limitation period in such cases.

The Court of Appeal held that the Alberta Limitations Act did not apply to causes of action created under federal legislation and which had their own limitation period. Also, the Court of Appeal found that applying different limitation periods based on where an action was brought would be contrary to legislative intent.

As a result, the Court of Appeal allowed the appeal and permitted the action to proceed.

The full case can be found here.

In Bell Media Inc. v. John Doe 1 (Soap2day), 2025 FC 133, the Federal Court provided its reasons for a site-blocking order it granted on December 16, 2024, which requires various Internet service providers (ISPs) to prevent access to websites associated with online piracy platforms operated under the brand Soap2Day.

The Order allows the Plaintiffs (a group of movie and television studio companies) to amend the Order with a simplified motion to add further domain names, subdomains, and/or IP addresses to a list of blocked websites. The Order is intended to address a growing trend observed by the Plaintiffs of new copycat infringement platforms immediately replacing platforms that have been successfully shut down. Such activity circumvents so-called “static” orders previously issued by the Court, which had to specify particular domains associated with a platform.

The Court stated that any sites added to the Order must “make infringing content available to the public, [be] unresponsive to notices of infringement, and operate in substantially the same way as the existing sites” (see paragraph 10 of the Reasons).

The Reasons for the Order and the Order are reported here.

Following Canada’s accession to the Madrid Protocol, the Canadian Intellectual Property Office (CIPO) experienced a higher than anticipated number of trademark applications, resulting in significant delays for examination of new applications.

Over the years, the CIPO implemented a number of measures to reduce the wait times, including hiring new examiners and using artificial intelligence tools.

Recently, the CIPO published updated information on their website regarding the forecasted processing times for new trademark applications. For trademark applications filed in February 2025, the forecasted wait times for examination are approximately:

• 13 months for applications filed using the pre-approved list of goods and services and for Madrid Protocol applications (based on the date of WIPO’s notification of designation); and
• 14 months for applications filed not using the pre-approved list of goods and services.

These forecasted wait times for examination of trademark applications not using the pre-approved list of goods and services would mark a significant improvement in wait times, as the CIPO is currently only examining such applications filed in February 2022 (i.e. around 36 months ago).

Following on our previous post, the Trademarks Opposition Board (TMOB) published a practice notice on 20 January 2025 regarding its Registrar-initiated expungement proceeding pilot project.

To review, under this pilot project, the Registrar of Trademarks will proactively send notices under Section 45 of the Trademarks Act to initiate summary expungement proceedings against randomly selected trademark registrations. The owners of such trademark registrations will be required to submit evidence of use of the trademark in Canada in the three-year period immediately preceding the date of the notice, or demonstrate special circumstances excusing non-use.

The stated goals of the project are to promote efficient use of resources (by removing so-called “deadwood” from the Register of Trademarks), promote fair competition (by assisting businesses trying to create new brands by clearing trademarks that are registered but not in use), and maintain the integrity of the trademark system (by maintaining the accuracy of the Register of Trademarks).

The practice notice includes information on the selection of the registrations, the procedure for discontinuance of proceedings, and the procedure that will be followed through to decision. The practice notice also discusses topics including correspondence, evidence, written representations, extensions of time, decisions, and appeals.

In Matco Tools Corporation v. Canada (Attorney General), 2025 FC 118, the Federal Court set aside a decision by the Commissioner of Patents that refused to reinstate Matco’s Patent Application No. 3,086,194 (the “194 Application”). The 194 Application had been deemed abandoned due to a failure to pay maintenance fees.

The Canadian patent agent retained for the 194 Application received instructions solely from Matco’s U.S. counsel and had no direct contact with Matco. Matco’s U.S. counsel operated under explicit instructions “to take no further action in these matters with regard to payment of annuities and maintenance fees”. Matco used third-party service providers for managing payment of maintenance fees.

Prior to 2021, Matco retained Computer Packages Inc. (CPI) to manage maintenance fee payments. In June of 2021, Matco switched from CPI to Dennemeyer. An error occurred during the data migration from CPI to Dennemeyer regarding the 194 Application, resulting in the 194 Application not being properly imported into Dennemeyer’s systems. Matco did not notice the data migration error in Dennemeyer’s report on the data migration, and consequently, the maintenance fee for the 194 Application was not paid. The Canadian patent agent later sent a notice regarding non-payment of the maintenance fee to Matco’s U.S. counsel; however, the notice was not forwarded to Matco because of U.S. counsel’s instructions to take no action regarding maintenance fees.

Upon later learning of the deemed abandonment of the 194 Application, Matco requested reinstatement and said that the failure to pay the maintenance fee resulted from the unforeseen data migration error. The Commissioner refused reinstatement, finding that Matco failed to meet the required “due care” standard. In particular, the Commissioner found that the data migration error was not relevant to the due care analysis and that no satisfactory explanation has been provided as to why the notice regarding non-payment of the maintenance fee was not forwarded to Matco.

The Court took issue with the Commissioner’s due care analysis. The Court was of the view that the data migration error was the proximate cause of the events that led to the deemed abandonment of the 194 Application. As such, the Commissioner was required to examine whether due care was taken to avoid the proximate cause of the error. Furthermore, the Court agreed with Matco that the Commissioner was overly focused on U.S. counsel’s failure to forward the notice to Matco regarding non-payment of the maintenance fee, despite the fact that U.S. counsel was specifically instructed to take no action on maintenance fees.

As a result, the Court set aside the Commissioner’s decision and ordered a redetermination of the reinstatement request.

The full decision can be found here.

The Federal Court recently issued two decisions relating to the Patented Medicines (Notice of Compliance) Regulations, SOR/93-133: Bayer Inc. v. Amgen Canada Inc., 2025 FC 107 [Bayer] and Serono v. Canada (Health), 2024 FC 1848 [Serono].

Both decisions related to delays by the Minister of Health in listing drug patents on the Patent Register. Registration on the Patent Register grants broad rights to drug patentees to prevent competitors from entering the market, and those rights may be significantly broader than standard patent rights.

In both Bayer and Serono, the patentees submitted patent lists to the Minister of Health, who then reviewed the submitted lists for approximately a week before adding the drug patents to the Patent Register. During this brief delay, competitors had filed regulatory submissions for generic versions of the patented drugs.

Under the Patented Medicines (Notice of Compliance) Regulations, submissions for generic drugs are required to address drug patents that are listed on the Patent Register. Consequently, the submitted patents, which had not yet been added to the Patent Register at the time, did not affect the regulatory submissions for the generic drugs, as would have been the case if the submitted patents had been on the Patent Register.

In both Bayer and Serono, the Minister of Health decided that the relevant listing date for the patents was the date that the patents were added to the Patent Register (and not the date the patent lists were submitted). The Federal Court held that the Minister’s decisions were reasonable.

Drug patentees should be aware of the delay between submitting patent lists and having their patents listed on the Patent Register, and how this delay may affect their patent rights.

Under the Copyright Act, where someone wishes to make use of a copyrighted work but is not able to locate the copyright owner, they can apply to the Copyright Board for a license to use the work. The Copyright Board has the power to issue a non-exclusive license on terms and conditions that the Board may establish.

On 8 January 2025, the Copyright Board granted Free Agency Creative a license to use an undated and unattributed postcard titled View of Howe Sound and Squamish from Garibaldi Park. The license permits Free Agency Creative to reproduce the postcard at a community information center and at the community center’s website, as well as on a printed brochure.

The decision from the Copyright Board is a reminder of the importance of ensuring that appropriate licenses to use works are obtained, even if the owners of the works are not locatable.

A copy of the decision is available here.