Cleaning Out the Closet: The Trademarks Opposition Board is Reviewing the Register

Section 45 of the Trademarks Act has generally provided a way for trademark registration applicants and opponents to remove “deadwood”—unused and abandoned trademarks that were on the trademark register. This process was generally reserved for parties to begin and oversee.

In December 2024, the Trademarks Opposition Board (TMOB) advised of a pilot project which would see TMOB initiate section 45 proceedings. The effect? TMOB can clear the register of deadwood without waiting for applicants or opponents to initiate the process.

Although this was always possible under the law, it is a change in operating procedure for TMOB. They have provided a practice notice and direction for their new process, both available online.

New Horizon

The pilot project will see TMOB send 200 notices to agents (and owners, as necessary) randomly selected registrations between January and March 2025.

Provided they have been on the register for more than three years, registrations will be randomly selected in 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.

The Registrar may decline issuing an s. 45 notice if there is a good reason to do so. Good reasons are determined on a case by case basis. According to CIPO, a non-exhaustive list of such reasons includes:

• the trademark registration is already the subject of a s. 45 proceeding pending before the Registrar or on appeal;
• it is within three years of the date of issuance of a previous s. 45 notice in cases in which the proceeding led to a final decision under s. 45; or
• the Registrar considers that issuing a s. 45 notice would be frivolous.

My Mark Was Selected – Now What?

If randomly selected, the owner or agent of the mark will need to submit evidence of use or special circumstances excusing non-use in their response. Owners have three months to provide evidence of use to the Registrar.

Based on the evidence provided, the Registrar may offer to discontinue the section 45 proceeding with the owner’s consent, or if the owner deletes certain goods and services as necessary.

If the Registrar is not initially satisfied that there is use even after reviewing the evidence, the trademark owner may have to file written representations and/or consider appearing for a hearing before the TMOB.

Further procedural steps are outlined in the relevant Practice Notice.

Takeaways

If you are the agent or owner of a registered trademark, now is a great time to ensure those trademarks are in use in Canada. 

For goods, this means selling the goods in association with the registered trademark, such as on packages, on receipts given at the time of purchase or on the good itself.

Use with services means displaying the mark when performing the services, or when advertising the services (so long as the services are ready to be performed in Canada).

Taking steps to ensure use of trademarks will ensure owners are ready for any future phases of this pilot project, as well as third-party-initiated s. 45 proceedings.