Pilot Project to Clear “Deadwood” from Canadian Trademarks Registry

The Trademarks Opposition Board has announced a new pilot project that is catching the attention of trademark practitioners and registered trademark owners in Canada. The project will involve the Registrar of Trademarks sending requests under Section 45 of the Trademarks Act to owners of randomly selected trademark registrations for evidence that these registered trademarks have been used in the past three years with all of the goods and services covered by the registrations. If satisfactory evidence is not provided in response to the requests, then the registrations will be amended or expunged from the register in their entirety.

The stated goals of the project are to:

1) Increase efficiency in the trademark registration process by removing “deadwood” from the Register;

2) Make it easier for businesses to develop new trademarks without having to contend with trademarks that are no longer in use; and

3) Ensure that the Register accurately reflects what trademarks are in usage in Canada.

The project suggests that Canada may be moving in the direction of countries like the U.S. where trademark owners are required to maintain their registrations by periodically submitting evidence of use.

While there is nothing new about Section 45 requests in themselves, they have, until now, always been made at the initiative of interested third parties – typically, parties trying to remove a registration from the register that is blocking an application to register a similar mark. What is new with this project is that the requests will now be made by the Registrar at the Registrar’s own initiative.

Those who are unfortunate enough to own registrations that are randomly selected under the program will need to prepare their evidence carefully to ensure that it shows use of the trademark with each of the goods and services covered by the registration during the relevant period. Given the potential stakes (e.g. loss of the registration), those trademark owners will be well advised to retain legal counsel to assist them in preparing the evidence, ideally in the form of a sworn affidavit with exhibits.

It is expected that 100 registrations will be selected in the first month of the project and then 50 registrations in each of the following two months. Once a “statistically significant” number of proceedings have concluded, the Board will gather the data and consider, among other things, whether or not to continue the project and, if so, whether there are particular types of registration that should be targeted in the future.

In the meantime, all owners of registered trademarks should ensure that each of their registrations is associated with a current address or agent for service so that any notice from the Registrar of Trademarks is received and can be acted upon in a timely way.

More information about this new pilot project can be found on the Trademark Opposition Board’s website.