Client Updates

Is Your Trademark at Risk? Understanding the TMOB’s New Pilot Project

Amalia Berg and Katherine (Kasia) Donovan

In January 2025, the Trademarks Opposition Board (TMOB) is launching a pilot project in which the Registrar of Trademarks will issue 50–100 section 45 notices per month for randomly selected trademark registrations.1 The pilot project aims to assess the number of registered trademarks no longer in use and ensure the Canadian Trademarks Register accurately reflects active trademarks. After gathering sufficient data, the TMOB will consult stakeholders for feedback.

Summary expungement proceedings, under section 45 of the Trademarks Act, are designed to ensure registered trademarks remain in active use. They allow the Registrar of Trademarks to request proof a trademark has been used in Canada in the last three years for the goods or services listed in its registration. If no valid proof is provided, the mark can be fully or partially expunged.

Trademarks at risk of cancellation include:

  1. Marks not in use: Marks for which owners cannot demonstrate genuine use during the specified period;
  2. Overly broad registrations: Marks registered for goods or services not currently offered; and
  3. Neglected registrations: Marks where owners fail to respond to a section 45 notice within the given timeframe.

Businesses or individuals with unused or dormant marks should regularly review and update their registrations to avoid vulnerabilities in such proceedings.

For assistance responding to a section 45 notice or strategizing on how best to protect your registrations, please contact any member of our Intellectual Property Group team, or visit the pilot project landing page for more details.

1 Section 45 of the Trademarks Act states:
Registrar may request evidence of use
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.

 

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