The Trademarks Opposition Board (TMOB) recently announced an ambitious pilot project to proactively review trademark registrations that have been registered in Canada for more than three years. Beginning in January 2025, the project will target monthly batches of potentially unused trademark registrations with notices based on section 45 of the Trademarks Act. This initiative could have major implications for Canadian and international corporations owning trademarks registered in Canada.

Why is the use of a trademark as fundamental as its registration?

Businesses need to understand that the protection of a trademark does not rest solely on its initial registration. An unused or misused trademark (for example, with changes in its appearance, related products or services, or distribution channels) can become vulnerable to summary expungement proceedings. If your trademark has not been properly used in the last three years, all or part of your registration could be cancelled.

In addition, proof of use must be solid, specific and recent. In the event of a notice issued by the Registrar, proof of use subsequent to the date of the notice will not be accepted to avoid cancellation.

Understanding section 45 procedure

The summary expungement procedure under section 45 can be initiated in one of two ways: either by a third party filing an application with the Registrar, or, as in this pilot project, by a direct initiative by the Registrar. The main steps in this procedure are as follows:

  1. Registrar’s notice: The Registrar sends a notice asking the registered owner to provide an affidavit or statutory declaration proving use of the mark in Canada during the three years preceding the notice, or explaining why it has not been used.
  2. Filing of evidence: The owner has three months to file the required evidence.
  3. Examination of evidence: The Registrar evaluates the evidence submitted. If the evidence shows insufficient or non-existent use, the trademark registration may be cancelled or modified, as appropriate.
  4. Decision and notification: The decision and reasons are communicated to the owner.

The pilot project: what it means for you

The COMC pilot project introduces a proactive approach. The Registrar will randomly select trademark registrations and send out notices requesting proof of use. Owners of registered trademarks will have to demonstrate not only that their mark is being used, but also that it is being used in connection with the goods and services specified in the registration.

This initiative has been identified as a priority by the registry, and aims to:

  • Lighten the burden on the trademark register by eliminating obsolete registrations, often referred to as “dead wood”;
  • Encourage fairer competition by freeing up space for new trademarks;
  • Improve the efficiency of the trademark system to better reflect market realities.

Is your trademark at risk?

If your trademark has been registered for more than three years, here are some questions to ask yourself:

  • Is it being used in its exact form as registered?
  • Does it still cover the same goods and services?
  • Is the registered owner the true owner of the rights in the trademark and user of the mark?
  • Is the mark used directly by the registered owner or, as in the case of franchises, through licensees? If the latter, is there sufficient legal control exercised by the licensor to ensure that the use of the trademark by any licensee has the same effect as if it had been used by the owner?

If the answer to any of these questions is no, your trademark registration could be vulnerable to summary cancellation proceedings.

What can you do to protect your trademark?

  1. Examine your trademarks: Examine your trademark portfolio to identify those that may be vulnerable.
  2. Update use practices: Ensure that your trademark is being used in accordance with its registration. This includes a review of licenses and use via licensees.
  3. Prepare proof of use: Collect and maintain clear and detailed evidence of the use of your trademarks.
  4. Consult an expert: Sound personalized advice can be decisive in regularizing the situation before a notice is issued or once it has been issued. If you’re unsure about trademark use or modifications, or how to properly demonstrate recent use of your mark, a lawyer and trademark agent on our team can guide you through legal advice and guidance with the Canadian Intellectual Property Office (CIPO).

Act now

The COMC pilot project marks an important change in CIPO’s approach to de-cluttering its registry. For corporations, it’s an urgent reminder of the importance of active and correct use of their respective registered trademarks. Don’t take unnecessary risks: anticipate and protect your assets by taking the necessary steps today.

If you have any questions, or would like to carry out an inspection of your trademarks, our firm is here to help. Contact us today to secure your rights and safeguard the long-term future of your intellectual property.

(Note: This text is published for information purposes only and should not be construed as legal advice).