In Hello Nori Inc. v. Sushi Nozawa, LLC, 2025 TMOB 95, the Trademarks Opposition Board (the “TMOB”) refused an application to register a design mark featuring the words THE ORIGINAL HAND ROLL BAR in association with restaurant services.

Notably, a registration owned by the Applicant for the word mark THE ORIGINAL HAND ROLL BAR had been expunged for non-use just before this opposition decision (in Miller Thomson LLP v Sushi Nozawa, LLC, 2024 TMOB 179).

The Opponent opposed the application on the basis that, inter alia, the applied-for trademark was clearly descriptive or deceptively misdescriptive, and that the Applicant had not used and did not propose to use the mark in Canada.

Regarding the descriptiveness ground, the TMOB found that “the words of the Mark are its dominant portion, due to the relatively simple, basic nature of its design elements… I accept that one could reasonably conclude that the words of the Mark plainly, self-evidently describe … an “original hand roll bar” founded in 2014 in Los Angeles, either in a laudatory sense or in the sense that it is the first of its kind”.

Regarding the non-use ground, the TMOB concluded that “considering the fact that over five years have passed since the application was filed … and the fact that the Applicant’s word mark has been expunged for non-use, the evidence also calls into question whether the Applicant ever genuinely proposed to use the Mark in Canada”.

As a consequence of both the descriptiveness and non-use grounds being successful, the TMOB refused the application.

This decision from the TMOB is a reminder of the clearly descriptive/deceptively misdescriptive analysis in the context of composite trademarks, as well as the vulnerability of trademark applications to being opposed on non-use grounds.

A copy of the TMOB’s decision is available here: https://canlii.ca/t/kbvnn

On 4 June 2025, the Canadian Intellectual Property Office (“CIPO”) released a practice notice regarding the use of AI in proceedings before the Trademarks Opposition Board (“TMOB”).

In brief, the practice notice requires any party to a proceeding before the TMOB to provide a declaration if AI has been used to create any content in a document prepared for the proceeding and filed with the Registrar of Trademarks.  The declaration must be in the first paragraph of such document and state that the filing party has reviewed and verified all AI-generated content and cited authorities.  Failure to provide a declaration when required or providing a false declaration may lead to an award of costs against the filing party.   CIPO has noted that the TMOB currently does not use AI to render decisions or analyze evidence in any of its proceedings.

CIPO provided examples of content that the TMOB considers to be AI-generated. For instance, written representations drafted using AI or legal authorities selected subjectively by AI qualify as such. Similarly, the state of the register evidence generated subjectively by AI, such as by asking AI to “find other registered trademarks that resemble [X]”, falls into this category.  By contrast, the state of the register evidence produced by search queries with objective criteria, such as “find all currently registered trademarks containing the word [Y]”, is not considered AI-generated content.  Additionally, exhibits created by AI that were attached to an affidavit and documents dictated using voice recognition or speech-to-text software are exempt from the declaration requirement.

The practice notice is available here.

We previously reported on the significant changes to the Charter of the French Language introduced through Bill 96, which was enacted in June 2022.  Those changes are now set to come into force on June 1, 2025.

In an open letter published on May 28, 2025, the Retail Council of Canada (RCC) and the Canadian Federation of Independent Business (CFIB) appealed with the Quebec government to extend the deadline for businesses to conform to the new language laws.  Although Bill 96 was enacted in 2022, some of the specific rules, regulations and clarifications regarding the changes were only published in the summer of 2024.  Michel Rochette, President of the RCC for Quebec, noted that businesses were left with “barely a few months to adjust to significant requirements, particularly in terms of signage, municipal authorizations, validation by the (Office québécois de la langue française), and the management of cultural, specialized, and short-lived products”.  The Quebec government turned down the request for an extension.

We remind trademark owners that the most significant changes to the Charter of the French Language relate to trademarks appearing on products, product packaging and displays.  Registered trademarks or trademarks that are subject to pending trademark applications can appear on products or product packaging in a language other than French (except where there is a French version).  However, any generic or descriptive terms that are part of the trademark need to be translated. Unlike product packaging, displays are considered commercial advertising and French must have a much greater visual impact than any other language.

In Gold Line Telemanagement Inc. v. Ereele GmbH, 2025 FC 904, the Federal Court granted declaratory relief to the Plaintiffs on the basis that the Defendants had not established that certain works met the conditions for subsistence of copyright and that copyright was thus not enforceable against the Plaintiffs. The Plaintiffs operated a worldwide video streaming platform offering multicultural programming. The Defendants included an Austrian digital marketing company and an Iranian movie producer.

Beginning in 2020, the Defendants alleged that content on the Plaintiffs’ streaming platform infringed the Defendants’ copyright in a number of movies and television programs, all of which were produced in Iran. The Defendants also filed complaints with third party app stores alleging that the Plaintiffs’ streaming platform infringed copyright. As a result of these complaints, the Plaintiffs initiated these proceedings.

The Court held that, since the works at issue were produced in Iran, and Iran is not a treaty country for the purposes of the Copyright Act, copyright in the works was not enforceable in Canada as against the Plaintiffs.

The Plaintiffs also advanced a claim under section 7(a) of the Trademarks Act in respect of the complaints made by the Defendants to the app stores. That section prohibits the making of false and misleading statements tending to discredit the business, goods or services of a competitor. However, the Court held that the Plaintiffs failed to establish a causal link between the complaints and any damage suffered by the Plaintiffs.

Costs and disbursements of $76,600 were awarded to the Plaintiffs due to the Defendants’ failure to participate in the proceedings.

The decision can be found here.

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.