The Canadian Intellectual Property Office (CIPO) and the Trademarks Opposition Board (TMOB) have announced a pilot project whereby the Registrar will proactively send notices to the owners of registered trademarks requiring them to prove that the trademark has been used in the past three years.
This pilot project serves as an important reminder that trademark owners should carefully review their trademark portfolio to ensure they have recently used their trademarks and have maintained records of their use.
Overview of Section 45 Proceedings
Trademarks that have been registered in Canada for more than three years can be cancelled, in whole or in part, where the trademark owner is unable to show that they have used the trademark with the goods and/or services set out in the registration in the past three years. Section 45 of the Trademarks Act allows any person to request that the Registrar of Trademarks commence summary cancellation proceedings against such a registration, which then requires the recipient of a section 45 notice to submit evidence of use or risk cancellation. The purpose of section 45 has been said to be to clear the Trademarks Register of any “dead wood”—registrations for marks that are no longer in use in the marketplace.
Historically, section 45 proceedings were generally only commenced against a registration where a person initiated them, often as a result of the registered mark blocking the requesting party’s application to register a trademark. However, the Trademarks Act allows for the Registrar to initiate section 45 proceedings on their own, though this has not been the Registrar’s practice in the past. This will change beginning in 2025.
Registrar-Initiated Section 45 Proceedings Pilot Project
Beginning in January 2025, the Registrar will randomly select 50 to 100 registrations and issue section 45 notices to their owners, requiring the owners to file evidence of use, or justification for non-use based on special circumstances, to maintain the registrations.
The pilot project targets trademarks registered for more than three years, chosen randomly across various categories such as use-based registrations and those based on foreign registration. In some cases, the Registrar may decline to issue a notice, namely where the registration is the subject of an ongoing or recent section 45 proceeding or appeal, or the notice would be frivolous.
The procedures have been updated slightly for the pilot project. In order to make the process less onerous, the TMOB has provided some additional resources for recipients of such notices. The Registrar may offer to discontinue the section 45 proceeding prior to the filing or written arguments on the owner’s consent if the evidence filed clearly shows use of the trademark in association with all of the registered goods and services, or where the owner voluntarily deletes the goods and services where there is no evidence of use. On the other hand, if the Registrar’s preliminary view of the evidence is not that it clearly shows use, the proceedings will continue with the option to file written submissions and/or an attend an oral hearing.
The TMOB will publish data from the pilot project on the webpage for the project available here and will invite consultations to gather feedback on the project.
Takeaways and Best Practices
Because section 45 proceedings were historically reliant on third party requests, many trademarks that are not in use would never face summary cancellation. With the new random selection, almost any trademark that has been registered for more than three years could be at risk. Trademark owners should carefully review their trademark portfolios to ensure they have recently used their trademarks.
Generally, the bar to demonstrate use for the purpose of section 45 proceedings is fairly low (for example, even one sale in the ordinary course of trade can support maintaining a registration). The best and least costly way to deal with a section 45 notice will be to file quality evidence that satisfies the Registrar the proceeding does not need to continue beyond the evidence stage. Trademark owners should therefore keep records of their trademark use, such as samples of products and advertising and records of sales and invoices.
If you have any questions or require assistance with your trademarks, please contact Sebastian Beck-Watt at info@pckip.com.
PCK IP is a leading North American intellectual property firm based in Canada, specializing in the preparation, prosecution, and strategic management of patent and trademark portfolios for global markets. Our team of seasoned patent agents, engineers, scientists, and IP lawyers supports clients across diverse technologies, with expertise in coordinating cross-border IP strategies. Contact us today to explore how we can help secure and manage your intellectual property.
The contents of this article are provided for general information purposes only and do not constitute legal or other professional advice of any kind.