Key takeaways
Effective 4 June 2025, parties involved in adversarial proceedings before the TMOB must disclose if they have used AI to generate their materials. This includes drafting substantive content for written representations, locating supporting case law and generating state of the register evidence. The Canadian Registrar has not yet issued a practice notice regarding the use of AI in submissions during the examination stage, i.e., responding to office actions. However, comparable principles could apply.
In depth
The TMOB has issued guidelines for the application of AI in contentious proceedings, following the precedent set by the Federal Court of Canada.
The practice notice does not define the term “AI” but indicates that a declaration is required only when "generative AI" is employed to produce content in a document. It lists specific examples to illustrate where AI must be disclosed:
- Written representations, or any portion thereof, that have been drafted using AI
- Any document in which a legal authority provided by AI is cited. An authority is considered to be provided by AI if AI determined subjectively whether the authority fit the search criteria that was provided, e.g., if AI was asked to "find a case that stands for [X]."
- Legal authorities provided in response to search queries having only objective criteria, e.g., "find all cases having the words 'inherent' and 'distinctive' within three words of each other," are not considered to be provided by AI, even if AI technology was used by the database being searched.
- State of the register evidence generated by AI and provided to the Canadian Registrar. State of the register evidence is considered to be generated by AI if AI determined subjectively whether a trademark fit the search criteria, e.g., if AI was asked to "find other registered trademarks that resemble [trademark]."
- State of the register evidence generated in response to search queries having only objective criteria, e.g., "find all currently registered trademarks containing the word [X]," is not considered to be generated by AI, even if AI technology was used by the database being searched.
Of the examples above, the use of AI for case law research is a notable addition and may have been influenced by two cases before the TMOB, where fabricated citations appeared in the submissions.1
In the circumstances outlined above, the TMOB requires that a party include the following declaration in their submissions:
Artificial intelligence (AI) was used to generate content in this document. All content generated by AI, and the authenticity of all authorities cited in this document, has been reviewed and verified by the [include the name of the party to the proceeding], or their trademark agent.
The practice notice provides examples of circumstances where the use of AI does not need to be disclosed. These include where exhibits to an affidavit like advertising materials were originally created using AI (as long as these materials were not created specifically for the opposition proceeding), and where document editing or dictation software was used in the drafting process.
Otherwise, failing to provide a declaration or providing a false declaration where required may result in a costs award against a noncompliant party.
It is also worth noting that the Canadian Registrar has not yet released a similar practice notice for the preparation of materials during the examination stage, but it is possible that similar principles would apply. Thus, companies should remain mindful of their use of AI for preparing responses to substantive and technical office actions issued by trademark examiners, e.g., using AI for goods and services amendments or to advance arguments for registrability.
Lastly, in issuing this practice notice, the TMOB clarified that it is not currently using AI to render decisions or to analyze evidence in any of its proceedings.
For more information regarding the practice notice, please visit: https://ised-isde.canada.ca/site/canadian-intellectual-property-office/en/trademarks-opposition-board/use-ai-proceedings-trademarks-opposition-board
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If you need guidance about how this practice notice could impact your trademark practice in Canada, please do not hesitate to contact us.
1 See Industria de Diseño Textil, S.A. v. Sara Ghassai, 2024 TMOB 150 at para 5 and Monster Energy Company v. Pacific Smoke International Inc., 2024 TMOB 211 at para 16.
