As of January 2025, the Registrar of Trademarks will randomly select trademark registrations and issue notices under Section 45 of the Trademarks Act (hereinafter the “Act”). requiring owners of registered trademarks for more than three years to submit evidence of use of their trademark in Canada or, if applicable, a justification for non-use based on special circumstances.
What does the Registrar of Trademarks have planned for 2025?
Section 45 of the Act provides a relatively quick way to clear the trademark register by removing trademarks that are no longer used in association with the goods and services listed in the registration (commonly referred to as “deadwood”). This procedure, which is summary in nature aims to establish a balance between the rights of trademark owners to continue enjoying their exclusive rights and the prohibition of monopolizing trademarks that are no longer in use.
Its purpose: to ensure that the trademark register accurately reflects trademarks that are actually used in association with the goods and services listed in their registration.
How will the Trademark Pilot Project be carried out?
The pilot project will be carried out in two phases:
Phase 1: Each month, the Registrar will send notices under Section 45 to randomly selected registrations according to the following schedule:
- January 2025: 100 notices;
- February 2025: 50 notices;
- March 2025: 50 notices.
Data on the percentage of registrations cancelled due to non-response, the number of abandoned proceedings and the number of maintained registrations will be published each month.
Phase 2: The Trademark Opposition Board (the “TMOB”) will hold consultations to gather feedback on the pilot project, including whether it should be repeated in the future and, if so, the type of registrations to target.
It will be important for trademark owners to follow the progress of the project to determine whether their registrations fall within a category that the Registrar intends to target in the future.
What will be the impact of the Pilot Project on Trademark owners?
This proactive initiative could have major implications for your business if you own registered trademarks in Canada.
It is important to understand that the protection of a trademark does not rely solely on its initial registration. A trademark that is not used (or improperly used) may become vulnerable to a summary cancellation proceedings, whether initiated by the TMOB or a third party. If your trademark has not been properly used in the past three years, all or part of its registration could be cancelled.
Furthermore, evidence of use must be solid and recent (within a maximum of three years).
It will therefore be necessary to assess whether your trademark is at risk.
What to do if your Trademark Has Been Registered for More Than Three Years?
If your trademark has been registered for more than three years, you should ask yourself some simple yet essential questions, such as:
- Is my trademark used in its exact registered form?
- Is it still used in association with the same goods and services as those listed in the registration?
- Is the registered owner the actual owner of the trademark rights and the user of thistrademark? Have there been any corporate operations that have had the effect of changing the identity of the owner, such as a merger or voluntary dissolution, or has the name of the owner been modified since the registration or renewal?
- Is the trademark used directly by the owner or through licensees? If so, is there sufficient legal control to ensure that the use by the licensee has the same effect as the use by the owner?
If the answer to any of these questions is no, your trademark registration could be vulnerable to summary cancellation proceedings.
How to Protect Your Trademark?
- Review your trademark portfolio to identify those that may be vulnerable;
- Update usage practices: Ensure your trademark is used in accordance with the goods and services listed in its registration. This includes, for example, a review of licenses and usage by licensees;
- Prepare evidence of use: Collect and maintain clear, detailed and dated evidence of your trademark’s use.
The TMOB’s pilot project shows a significant shift in approach of the Canadian Intellectual Property Office to declutter its register. For businesses, this is as a strong reminder of the importance of the active and accurate use of their registered trademarks.
For any questions or to review your trademarks, our team of intellectual property lawyers is available to assist you.