Owners of trade marks registered in Canada should be aware of new initiative that could require them to prove that the protected mark has been used in Canada, even if the registration has not been challenged on non-use grounds by a third party.
Just as in many other territories around the world, the Canadian Trademarks Act provides for summary cancellation of a registration when a mark is not being used. The Registrar of Trademarks will require the owner to furnish proof that the mark is in active commercial use in association with the goods and/or services covered by the registration during the three year period after registration or the three year period prior to a non-use cancellation challenge. If the mark is not in use and there are no extenuating circumstances that justify non-use, the registration may be cancelled.
Such a non-use cancellation challenge is made under Section 45 of the Canadian Trademarks Act and usually follows the receipt by the Registrar of a written request filed by a third party. However, the provisions of Section 45(1) also permit the Registrar to initiate such a proof of use requirement on his or her own volition:
45 (1) After three years beginning on the day on which a trademark is registered, unless the Registrar sees good reason to the contrary, the Registrar shall, at the written request of any person who pays the prescribed fee — or may, on his or her own initiative — give notice to the registered owner of the trademark requiring the registered owner to furnish within three months an affidavit or a statutory declaration showing, with respect to all the goods or services specified in the registration or to those that may be specified in the notice, whether the trademark was in use in Canada at any time during the three-year period immediately preceding the date of the notice and, if not, the date when it was last so in use and the reason for the absence of such use since that date.
A new pilot project that commences in January 2025 will see the Registrar begin to exercise its discretion to demand that trade mark owners demonstrate that their marks have been used in Canada in order to maintain their registered rights.
In an apparent attempt to ‘de-clutter’ the Canadian Trademarks Register, the Registrar will, on a monthly basis and on its own initiative, issue cancellation proceedings for non-use against owners of randomly selected registrations that have been on the Register for over three years. The unlucky owners of any such registrations must then file evidence of use of their mark in association with each protected goods and/or services, or else lodge reasons for justifiable non-use. In the absence of use or exceptional circumstances, the selected registrations will be cancelled, either in whole or in part depending upon the evidence submitted. To begin with, it appears as though the Registrar will be selecting 100 registrations at random in January, followed by 50 further registrations in each of February and March.
Owners of trade mark registrations are therefore urged to ensure that their marks are being used in Canada, as well as to maintain comprehensive documentary evidence of all such use, in case they are unfortunate enough to find their registration(s) selected by the Registrar under this pilot scheme. This practice would also assist should the Canadian trade mark registration be challenged by a third party too.
If you wish to discuss the points covered in this article or need advice on any aspect of your trade mark portfolio, please get in touch with our trade mark team who would be delighted to assist you.
