New Year, New Register: TMOB Resolves to Trim the Trademark Fat

On December 12, 2024, the Trademarks Opposition Board (TMOB) announced a new pilot project whereby the Registrar of Trademarks will proactively (on its own initiative) send section 45 notices against a limited number of registered marks. According to the new landing page for the pilot project, the pilot project will be carried out in two phases, which we have termed the “data collection” and “consultation” phases.

Section 45 Pilot Project

Phase I: Data Collection

Beginning in January 2025 the Registrar will issue section 45 notices against randomly selected registrations over three years old. Based on current information, the pilot project will begin with 100 notices in January 2025, followed by 50 in each of February and March. The TMOB has not announced how many notices will be sent in April 2025 and thereafter, if any.

Registered marks that are unlikely to receive a section 45 notice under this pilot project include those against which the Registrar has no authority to issue a notice (e.g., the registration has been on the Register for less than three years or has already been expunged or cancelled) and those for which the Registrar has “good reasons” not to issue a notice. “Good reasons” include:

• The registration is already the subject of a section 45 proceeding (pending or on appeal);
• It is within three years of the date of issuance of a previous section 45 notice in cases in which the proceeding led to a final decision; or
• The Registrar considers that issuing a section 45 notice would be frivolous.

Phase II: Consultation

Once a “statistically significant” number of Registrar-initiated section 45 proceedings have been initiated (no word yet on how many proceedings will be required for statistical significance), consultations will be held to gather feedback on:

1. Whether the pilot project should continue; and, if so,
2. Whether there are particular types of registrations which should be targeted;
3. Whether section 45 notices should be issued against all or only some of the registered goods and services; and
4. Whether the Registrar should perform an investigation against a selected registration and only issue a section 45 notice if the investigation does not show any use in Canada.

What to Do if You Get a Section 45 Notice

Section 45 of the Trademarks Act provides a mechanism to clear the trademark Register of “deadwood”—i.e., registered marks that are no longer in use in association with some or all of the goods or services with which they are registered. These proceedings may be initiated at the request of “any person”, or by the Registrar, under his or her own initiative (though prior to this pilot project, we are unaware of any section 45 proceedings initiated directly by the Registrar). 

In response to a notice under section 45, owners of registered marks must demonstrate use of the trademark in in association with the goods or services with which the mark is registered in the three years prior to the notice being issued (or explain why it has not yet used the trademark). If the trademark owner does not provide sufficient evidence, the Registrar may expunge or amend the trademark from the Trademarks Register.

That’s a lot of information! Let’s break that down.

Who can request a section 45 notice?

• “Any person” may request the Registrar give notice under section 45 to the registered owner of a registered mark, so long as they pay a prescribed fee. The trademark owner is required to serve any evidence it files in respect of a section 45 notice on the requesting party.
• The Registrar of Trademarks may also request evidence of use on its own volition.

What trademarks are potentially subject to a section 45 notice?

• Section 45 is limited to active registered marks that have been on the Trademarks Register for a minimum of three years.

What evidence is required?

• Upon receipt of a notice under section 45 the registered owner must file evidence of use (or justification for non-use based on special circumstances) of the registered mark in the three years since the date of registration. “Use” is defined in section 4 of the Trademarks Act, and has a different meaning depending on whether the trademark is used in association with “goods” or “services”.
• Registered owners should provide evidence of use of a trademark and sales showing the transfer of property. If invoices are not available, a summary table of sales may be provided for each of the goods sold in Canada.
• Evidence filed in response to a notice under section 45 should be in the form of an affidavit or statutory declaration. See this Guide for useful information on how to prepare an affidavit or statutory declaration.
• The evidence should relate to use of the trademark in relation to all goods or services specified in the notice, which may be all goods or services in association with which the trademark has been registered.
• Because trademarks convey rights that are national in scope, evidence of use of a registered mark internationally will not be evidence of use within the meaning of the Trademarks Act.

When can a request that notice be given under section 45 be made?

• Requests can be made any time after the trademark that is the subject of the request has been registered for three years.

Why would someone request a notice under section 45?

• Generally speaking, the purpose of section 45 is to ensure that registered marks are actively used in commerce and not simply held to potentially be used against others.
• Section 45 proceedings can also be an effective way to overcome an office action where a trademark no longer in use has been cited against a trademark application.

Potential Implications of the Pilot Project

The stated goal of the pilot project is to “help provide insight into how many registered marks are no longer in use”. The TMOB says the pilot project will promote an efficient use of resources, fair competition, and will maintain the integrity of the trademark system. The TMOB will publish data on the Registrar-initiated section 45 proceedings and, for the purpose of comparison, proceedings initiated by third parties.

While these are commendable priorities to be sure, trademark owners whose registered marks are randomly selected may feel that it is unfair they should be compelled to expend significant resources defending their trademark rights for the sake of data collection. Even for established traders whose registered marks have been consistently used since the date of registration, the costs associated with gathering and preparing evidence of use can be substantial. These costs will be even higher if the trademark owner decides to file written submissions or request a hearing, and higher still if the trademark owner appeals the decision of the TMOB to the Federal Court pursuant to subsection 56(2) of the Trademarks Act.

Furthermore, it remains unclear whether and to what extent the pilot project will impact current processing times for section 45 proceedings. According to the TMOB, a section 45 proceeding before the Registrar can take “as long as two to four years or even longer”. Questions remain about whether and to what extent current wait times will be impacted by the pilot project, particularly if it is extended or becomes permanent. Based on our experience, proceedings before TMOB are presently experiencing longer than normal processing times, particularly for matters that are proceeding to hearing and decision.

However, based on the TMOB’s web page, the Registrar is unlikely to pursue the section 45 proceeding to a conclusion (and may seek the registered owner’s consent to discontinue) if the evidence appears to clearly show use of the registered mark in association with all the registered goods and services.

If you have further questions, or if you receive a Section 45 Notice from the Registrar as a result of this pilot project, please contact a member of our Trademarks Team for assistance.