By Sepal Bonni and Cameron A. Axford

On January 1, 2025, the Trademarks Opposition Board (“TMOB”) launched a pilot project pursuant to section 45 of the Trademarks Act (the “Act”), whereby the Registrar of Trademarks (the “Registrar”) will randomly issue section 45 notices against registered trademarks (as further explained below). This initiative aims to promote fair market competition by clearing “deadwood” or unused trademarks and maintain the integrity of the Canadian trademark registration system by ensuring the Register of Trademarks (the “Register”) reflects trademarks that are in use.           

Section 45 of the Act provides a mechanism that allows any third party to request that a trademark be expunged (removed) from the Register if the owner cannot evidence use of the trademark in association with the goods and services in Canada during the three-year period immediately preceding the date of the section 45 notice, and there are no special circumstances excusing the non-use. These proceedings are typically initiated by third parties whose trademark applications have received a confusion objection due to an existing registration they suspect is not in use. Initiating the proceeding can lead to the removal of the registration from the Register, thereby allowing their application to proceed. However, section 45 does also provide authority for the Registrar to initiate proceedings on its own. Until now, the Registrar has rarely (if ever) exercised this power.

As part of this pilot initiative, the Registrar will randomly issue section 45 notices to registered trademark owners, prompting a three-month deadline for the owner to submit evidence of use, in the form of an affidavit or statutory declaration. Under section 45, the same evidentiary requirements apply regardless of whether the proceeding is initiated by a third party or through the new randomized process. This evidence must demonstrate that the trademark has been used in association with the registered goods and services in the three-year period immediately preceding the date of the notice. If the trademark has not been used in association with the goods and services at any time during the relevant period, the affidavit or statutory declaration must indicate the date the trademark was last in use and the reason(s) for the absence of use since that date. In order for the registration not to be expunged, the Registrar must be satisfied that there were "special circumstances" excusing the absence of use during the relevant period. "Special circumstances" means circumstances or reasons that are unusual, uncommon, or exceptional which are beyond the control of the owner. This is an incredibly difficult hurdle to overcome. As a result, most usually, when evidence of use of the trademark in association with relevant goods and services cannot be adduced, the trademark is expunged from the Register or amended to remove the unused goods or services, potentially weakening the scope of protection of the trademark.

The TMOB’s pilot project is a timely reminder to charities and not-for-profits (“NFPs”) to ensure proper usage of their trademarks. Given that charities and NFPs have begun receiving these Registrar initiated section 45 proceeding notices, it is important that charities and NFPs with registered trademarks ensure they take proactive actions, including consistent and correct trademark usage. This involves using trademarks in association with all of the registered goods and services. Consulting with legal counsel is necessary to ensure compliance with trademark law's nuanced criteria for sufficient use and minimizing the risk of losing trademarks due to insufficient use. Additionally, maintaining accurate and organized records of trademark usage is essential for meeting evidentiary requirements. Charities and NFPs should also periodically review their trademark portfolios to ensure trademarks are actively used, and assess continued relevance to their missions.

​Read the February 2025 Charity & NFP Law Update