Canada: Use it or lose it - new trademark cancellation pilot project

17 Dec 2024    1 minute read
Cancellation Proceedings Section 45 Notices Canadian Trademarks Registry Trademarks Opposition Board Pilot Project Trademarks

In brief

In January 2025, the Trademarks Opposition Board will be launching a new pilot project that will increase the cancellation of trademark registrations. The pilot project aims to proactively issue cancellation, i.e., Section 45, notices ("Notices") to randomly selected trademark registrations that have been on the register for over three years. Trademark owners who receive a Notice must provide evidence of trademark use within a three-year period prior to the Notice or justify non-use based on special circumstances.

In essence, companies with inactive trademark registrations will now face a higher risk of losing unused trademarks under this new initiative.

Contents

Key takeaways

It is crucial that companies look closely at their trademark portfolios to safeguard their valuable intellectual property and ensure the following: 

  1. Any marks that could potentially be vulnerable to cancellation are being used. 
  2. They develop strategic initiatives and programs to address potential risks of cancellation proceedings.
  3. Their records contain evidence of use of their registered mark(s), with each of the goods and services listed in the registered mark(s) specifications within the last three years.
  4. They avoid significantly altering their trademarks "as used" from what was "registered."

In depth

Cancellation (Section 45) proceedings have typically been initiated by third parties seeking to remove a registered trademark from the Canadian Trademarks Registry. Companies should be aware that starting in January 2025, the Trademarks Opposition Board will now proactively issue Notices to randomly selected trademark registrations. These Notices will be sent out in monthly batches of 50 to 100 notices as part of a pilot project designed to: (i) provide insight into how many registered trademarks are no longer in use; (ii) ensure efficient use of resources and reduce the Register from being cluttered with "deadwood"; (iii) promote fair competition; and (iv) maintain the integrity of the Canadian Trademarks system.

Information regarding this initiative can be found here.

If you need further information on how to protect your marks or about this pilot project, please do not hesitate to contact us. 

Contact Information
Stephanie N. Vaccari
Partner
Toronto
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stephanie.vaccari@bakermckenzie.com
Sepideh Nassabi
Counsel
Toronto
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sepideh.nassabi@bakermckenzie.com

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