The Canadian Trademarks Registrar is now initiating section 45 non-use cancellation proceedings of its own accord. The pilot project aims to get a sense of how many registered marks are deadwood that can be cleared from the Register. The Registrar has started issuing section 45 notices against a limited number of trademark registrations at random.
Since 2019, it has been clear that the Registrar has the authority to initiate such section 45 notices on its own initiative (instead of at the written request of a third-party), but it had not done so (at least on a systematic basis) until this pilot project began.
Notably, to ensure a more cost-efficient process, in cases where the owner’s evidence clearly shows that a registered trademark remains in use with the each of the registered goods/services, the Registrar may offer to discontinue the section 45 proceeding with the registered owner’s consent. Further, an oral hearing in such Registrar-initiated section 45 proceedings would only be scheduled at the request of the registered owner.
In phase 1 of the pilot project, the Registrar is set to send out 100 section 45 notices in January, followed by 50 of such notices in February, and another 50 notices in March, with a larger proportion of those notices being sent to registrations that include claims of use under the old Trade-marks Act. Throughout this process, the TMOB will publish on their website (here) the statistics with respect to the percentage of registrations expunged, the number of proceedings discontinued, and the number of registrations maintained compared to the number of section 45 proceedings initiated by the Registrar.
In phase 2 of the pilot project, the TMOB will organize consultations to gather feedback on whether the pilot project should continue, whether certain types of registrations should be targeted, whether section 45 notices should be issued against all of the registered goods/services, and whether the Registrar should perform its own non-use investigation before deciding whether to issue a section 45 notice against a particular registration.
If you or your client have received a section 45 notice from the Registrar (or a third-party) and need any assistance, please contact a member of our trademarks team.