An ill wind to blow from the trademark office? Trademark owners best prepare right now

It’s been said that the phrase "it’s an ill wind that blows nobody any good" originated in the sixteenth century. Starting in 2025, Canada’s trademark office will be starting a pilot project to gain insight into the number of Canadian trademark registrations no longer in use.

The goal is laudable. The execution may cause some trademark owners time and expense, hence the “ill wind.”

The mechanism the trademark office will use is s. 45 of the Trademarks Act.  Under this section, anyone — it’s usually competitors — may ask the Registrar of Trademarks to issue a notice to an owner to prove use of a registered trademark in Canada in the three years immediately prior to the date of the notice, or justification for non-use based on special circumstances. The proof is by way of affidavit or solemn declaration.  Failure to provide compelling evidence in response to a s. 45 notice results in the expungement of all or portions of the registration.

The Registrar will be issuing s. 45 notices to randomly selected owners of trademark registrations starting in January.  Owners will then have three months to provide their evidence of use. According to the trademark office, the Registrar may offer to discontinue the section 45 proceeding on the owner’s consent in straightforward cases, based on the evidence provided. Otherwise, the owner may have to file written representations and/or consider appearing for a hearing before the Trademark Opposition Board, an arm of the trademark office.

What should owners of registered trademarks do? As soon as possible, they ought to ensure that their trademarks are in use in Canada.  For goods, this means selling the goods in association with the registered trademark, on packaging, invoices, and the like. For services, this means advertising and performing the services in Canada.

The time to act is now as the ill wind will commence blowing in January.

Fillmore Riley’s Trademark Practice

Our trademark lawyers can help you determine whether your mark is being used in Canada. Please contact one of our lawyers for more information.