Clearing the Deadwood: Inactive Trademarks at Risk as Section 45 Pilot Project Announced

16 décembre 2024

Écrit par Robert McDonald, Sebastien Gittens, Emily Kettel, Kees de Ridder and David Wainer

On December 12, 2024, the Canadian Trademarks Opposition Board (TMOB) announced plans to initiate a pilot project in January 2025 whereby the Registrar of Trademarks will proactively issue a limited number of section 45 notices against existing trademark registrations with the primary intent to assess how many of these trademarks are no longer in use.

At this stage, the registrations to receive these notices will be randomly selected from those that have been registered for more than three years. It is anticipated that one hundred section 45 notices will issue in January 2025, followed by fifty notices in each of February and March, 2025.  The project will subsequently be reevaluated by the TMOB to determine if it will continue.

Background on Section 45 Proceedings

By way of background, section 45 of the Canadian Trademarks Act allows the Registrar, either at the request of a third party or on the Registrar’s own initiative, to require that the owner of a registered trademark demonstrate that the trademark was used in Canada in the last three years. Absent any special circumstances, if the owner cannot prove such use, the trademark registration will be: (1) amended to the reflect the actual goods and services in association with which the trademark was used; or (2) expunged from the register. By removing deadwood, this procedure is intended to ensure that the Canadian trademarks register remains accurate and up-to-date. It is particularly important given that it is not necessary to prove use of a trademark in order to obtain registration.

The Pilot Project 

The goals of this pilot project are to:

1. promote efficiency by removing inactive trademarks and streamline the registration process by reducing unnecessary examination objections;
2. streamline branding decisions by clearing unused trademarks, which minimizes obstacles for businesses conducting pre-filing trademark clearance searches; and
3. ensure system integrity by creating an accurate register reflecting trademarks actually being used in association with their goods and services.

The project will send section 45 notices to trademarks that have been registered for at least three years, selected from the following categories:

1. registrations based on use; 
2. registrations based on proposed use with a declaration of use;
3. registrations based on use and registration abroad;
4. registrations with multiple bases; and
5. other registrations over three years old. 

Once the project gathers sufficient information, the TMOB will seek stakeholder feedback on:

1. continuing the pilot project; 
2. targeting specific types of registrations;
3. whether section 45 notices should address all or some goods and services in a registration; and
4. the potential for the Registrar to perform investigations to verify trademark use before issuing section 45 notices.

Conclusion

The announcement of this project represents a timely reminder for organizations to review their intellectual property portfolio and consider non-use of registered trademarks. In particular, organizations should:

1. ensure that an agent and representative for service are appointed to ensure that correspondence is received and acted on in a timely manner;
2. be aware of the requirement for use of a trademark in relation to the claimed goods and services, and maintain evidence of such use in the event that its registration is ever challenged (e.g., pursuant to a section 45 proceeding); and
3. consider commencing use of currently inactive trademarks.

If you have any questions with respect to how your organization should evaluate its current trademark portfolio, we invite you to reach out to a member of our Innovation, Technology & Branding practice.

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