June 17, 2022 is a significant day in Canadian trademark practice. Why?  That day is the third anniversary of the coming into force of significant amendments to Canada’s Trademarks Act.  Why should you care?

Among the most significant amendments to Canada’s trademark laws on June 17, 2019, was the elimination of the requirement in Canada to claim use of a trademark in Canada (or elsewhere) prior to registration.  As a result, starting that day, the Canadian trademark Register started to fill with registrations covering goods and services that were never in use.  Prior to that time, registrations in Canada had to be supported either by a claim at filing that the trademark had been used, or by a declaration that the trademark had been used in Canada in association with all of the goods and services for which registration was sought.  For many years, applications filed on the basis of proposed use in Canada covering a wide array of goods and services were allowed, but the scope of goods and services was significantly narrowed by the time the application matured into a registration since the applicant had to file a declaration of use.

Under section 45 of Canada’s Trademarks Act, once a Canadian trademark registration is more than three years old, at the request of any person (and upon the payment of a government fee), the Registrar can send a notice to the registrant requiring it to show, by way of evidence, that it has used the trademark in Canada at any time in the immediately preceding three years, with each of the goods and services covered by the registration, in default of which the registration will be expunged, at least for the goods and services for which such use is not shown.

As a result,  Canadian trademark registrations which were registered after June 17, 2019 and which have yet to be or never used in Canada, will start to become vulnerable to such summary non-use cancellation proceedings (also sometimes referred to as Section 45 proceedings) on a rolling basis after June 17, 2022. 

Since registrations issued after June 17, 2019 may not be supported by use of the trademark in Canada, owners of such registrations should consider to what extent it is possible to commence use of such marks in Canada for all or some of the goods and services for which it is registered.  Similarly, persons for whom third parties’ Canadian trademark registrations may pose a bar to the proposed use or registration of their trademarks in Canada, may wish to consider investigating whether such trademarks appear to be in use in Canada and if such use cannot be readily determined, starting Section 45 proceedings with a view to expunging the potentially problematic third party registrations, whether in whole or in part.

With the elimination of the pre-registration use requirement in Canada, we anticipate that a larger percentage of Canadian trademark registrations will be susceptible to Section 45 proceedings.  To what extent there will be a greater number of Section 45 proceedings brought after June 17, 2022 remains to be seen.

Summary By: Gary Daniel


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