By Sepal Bonni and Cameron A. Axford

As discussed in the March 2025 Charity & NFP Law Update, long-awaited changes to Canada’s Trademarks Act (the “Act”) and Regulations came into effect on April 1, 2025, with implications for trademark enforcement. Among the most consequential reforms is an amended provision that requires trademark owners to demonstrate use of a mark in Canada (or “special circumstances” excusing non-use) within the first three years of registration before a court will award any relief. This change poses a significant shift that charities and not-for-profits (NFPs) should be mindful of.

Under the new subsection 53.2(1.1) of the Act, a party initiating enforcement under sections 19 (exclusive rights), 20 (infringement), or 22 (depreciation of goodwill) must show that their trademark has been used in Canada if the registration is less than three years old. Alternatively, the owner must demonstrate special circumstances excusing non-use. This use requirement prevents enforcement based solely on a registration without use, and ensures that only trademarks actively used in the marketplace can form the basis of enforcement actions during this initial period.

This is a departure from prior law, which allowed trademark owners to initiate Federal Court proceedings based on a registered mark without demonstrating use – regardless of how recently the mark had been registered. It also closes a strategic loophole: previously, owners of newly registered but unused marks could assert their rights while avoiding scrutiny under section 45, which only allows non-use cancellations after three years.

For many charities and NFPs, this amendment raises practical concerns. These organizations often register marks proactively for future programs, fundraising campaigns, or long-term initiatives that may take time to roll out. In such cases, if enforcement is necessary during the early life of the registration, the absence of use could now preclude legal action – potentially leaving important assets unprotected.

In light of these developments, charities and NFPs should review their trademark portfolios to determine whether recently registered marks are actively in use, and where they are not, ensure proper use commences promptly. It is also prudent to maintain detailed dated records of the trademark use in Canada for each mark, as this information may become critical in the event of a trademark dispute.

​Read the May 2025 Charity & NFP Law Update