
In Canada, a person can register a trademark without proving that the trademark is currently being used in the marketplace. When a registered trademark is renewed every ten years, the owner simply pays applicable government fees to retain ownership.
Competitors can challenge a registration for non-use by filing a request for a summary trademark expungement. This procedure requires the trademark owner to provide evidence of trademark use within the last three years. If the evidence isn’t deemed sufficient, the registration is expunged.
New Trademark Opposition Board Pilot Project Announcement
On December 12th Trademarks Opposition Board (the “TMOB”) published a practice notice announcing a pilot project that will proactively send notices of summary expungement proceedings against randomly selected registrations.
The pilot project calls for 100 notices to be sent out in January 2025, 50 in February 2025, and 50 in March 2025.
Who Will Be Selected?
The registrations chosen for participating in this pilot project will be randomly selected from those on the Register for more than three years to receive a section 45 notice requiring it to submit evidence of use or special circumstances excusing non-use. Registrations will be selected randomly from the following categories:
registrations based on use;
registrations based on proposed use for which a declaration of use was filed;
registrations based on use and registration abroad;
registrations including multiple bases;
remaining registrations registered for more than three years.
What is the process?
Correspondence addressed to the Registrar in respect of a section 45 proceeding must follow sections 3 to 15, 68 and 69 of the Regulations and the Canadian Intellectual Property Office (CIPO)'s practice with respect to Correspondence Procedures.
The evidence furnished in response to the section 45 notice should demonstrate:
use of the registered trademark in Canada at any time during the three-year period immediately after the date of the section 45 notice (the relevant period) with respect to each of the registration's goods or services specified in the section 45 notice; and, if not,
the date when the registered trademark was last used in Canada and the reason(s) for the lack of use since that date.
We can help!
Have questions about protecting your trademark? Contact Froese Law for any questions and further support.
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