The Canadian Trademarks Opposition Board (the "TMOB") has now launched its pilot project whereby the Registrar of Trademarks (the "Registrar") will proactively initiate section 45 expungement proceedings against a limited number of trademark registrations. This proactive approach to clearing "deadwood" trademarks from the Canadian Trademarks Register (the "Register") underscores the importance of maintaining active use of registered trademarks, and evidence of such use.
What Are Section 45 Proceedings?
Section 45 of the Trademarks Act (the "Act") provides a mechanism to challenge the validity of a trademark registration that is not actively being used in Canada. Ordinarily, these proceedings are initiated by parties who suspect that the trademark of another is no longer in use and who are looking to strategically have that mark expunged (removed from the Register). This is often done if a registration is blocking the registration of their own mark, or affecting the distinctiveness of its current mark, or family of marks. However, section 45 of the Act also provides authority for the Registrar to initiate these proceedings on its own initiative, a power which the Registrar has rarely exercised until now with this pilot project.
The process of a third party-initiated proceeding and a Registrar-initiated proceeding is largely the same. Instead of a third party requesting the Registrar to issue a section 45 notice to the trademark owner, the Registrar will issue the notice on its own initiative.
The notice will require the trademark owner to provide evidence of use within the three years preceding the notice. If the trademark owner fails to demonstrate use or fails to provide sufficient justification for non-use, then the trademark registration may be expunged.
Evidence is submitted in the form of an affidavit or statutory declaration. After the submission of evidence, the trademark owner will have the option to submit written representations and request an oral hearing before a member of the TMOB (both of which are optional). There are strict deadlines for all these steps (ranging from 1-3 months), so it is important to pay attention and seek professional guidance upon receiving a section 45 notice.
Key Details of the Pilot Project
Under the pilot project, the Registrar will issue monthly batches of section 45 notices to randomly selected registrations: 100 notices in January 2025, 50 in February 2025, and 50 in March 2025.
Modifications to the standard section 45 proceeding have been implemented to ensure a more efficient process.
- Trademark owners will be asked to correlate evidence with each of the goods and services in the registration to facilitate efficient processing by the Registrar.
- In straightforward cases, the Registrar may offer to discontinue the section 45 proceeding with the trademark owner's consent (i.e. where the evidence clearly indicates that the trademark remains in use).
- At a trademark owner's request, a hearing could be scheduled between the Registrar and the trademark owner.
Once a statistically significant number of proceedings have concluded, the TMOB will organize consultations to gather feedback on whether the pilot project should continue.
The pilot project aims to gain insight on how many registered trademarks are no longer in use. This is in line with the Registrar's priority of ensuring that the Register accurately reflects trademarks that are in use, and in association with the goods and services listed in the registration. The initiative is expected to yield several benefits for the Canadian trademarks system. Clearing the Register of inactive marks will create a more accurate and reliable Register, reducing clutter and potential conflicts, and make it easier for businesses to identify and register new trademarks. If selected, a trademark owner will have to incur costs to defend the proceeding (prepare evidence, etc.) or risk losing the registration.
Practical Tips for Trademark Owners
The proactive involvement of the Registrar means that even if a third party does not initiate a section 45 proceeding, a trademark could still face scrutiny through a Registrar-initiated proceeding. It is even more important now to ensure active use of your trademarks, or risk losing their registrations. To safeguard your trademarks, consider the following best practices:
- Document Your Use and Maintain Proper Records: Keep good records of use within the last 3 years. The use of the registered trademark should be use in Canada, and in association with each of the goods and services listed in the registration. For example, photographs of the goods bearing the trademark, product labels bearing the trademark, copies of marketing materials advertising the services in association with the trademark, and copies of invoices showing sale/rendering of the goods and services covered by the registration.
- Review Your Trademark Portfolio, Identify and Revive Use of Dormant Marks of Value: Have procedures in place for routine review of your trademark portfolio to ensure your trademarks are actively in use and identify ones that have become dormant. Consider if the dormant marks are still of value to you and consider reviving use.
- Risk of Significant Changes to a Trademark Over Time: If there are significant differences in the current use of the trademark (ex. different appearance or different goods and services) compared to what was originally registered, evidence of the current use may not be sufficient to defend the registration against a section 45 proceeding. In this case, you may want to consider reviving use of the trademark as registered or filing a new application for the current mark.
- Appoint a Trademark Agent for Your Registrations: To ensure that correspondence issued from the Canadian Intellectual Property Office are received and acted on in a timely manner.
- Seek Professional Guidance of a Trademark Agent: There are strict deadlines for steps in section 45 proceedings. Preparing affidavit evidence for section 45 proceedings can also be time-consuming. If you receive a section 45 notice, it is recommended to engage a trademark agent who can assist with preparing the necessary evidence and navigating the process.
Conclusion
The TMOB's pilot project to initiate section 45 proceedings is a significant step toward maintaining the accuracy of the Register. By targeting unused marks, the Canadian Intellectual Property Office aims to foster a more dynamic and reliable trademark system that benefits both businesses and consumers. Although the scope of the pilot project is currently limited, it may be expanded after consultations and if the project proves to be successful at improving the efficiency of the Canadian trademark system. Trademark owners should pay more attention now to ensure their trademarks are in use and be prepared to defend section 45 proceedings (both third party and Registrar-initiated ones).
To view the original article click here
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
