As you may remember, in June 2019, Canada enacted a whole new version of the Trademarks Act (the “TMA”) and which did away with lots of the requirements that applicants previously has to contend with. Case in point: since then, applicants wishing to register their marks in Canada no longer have to show (or even claim) they actually used their marks, merely that they want to register them.
Unsurprisingly, this lead to more than a few organizations and businesses filing applications for marks that may not have been registrable prior to 2019, back when the Trademarks Office (the “TMO”) was concerned with confirming owners actually has used their marks in Canada. As a result, the Canadian register is now filling up with more marks, part of which do not relate to trademarks that are actually being used in association with the actual products and services listed in the application. Welcome to Canadian trademark law in 2022!
Fortunately for us, one thing the TMA still does contain (about use) is a provision granting anyone the right to question whether any given registered mark was actually used in Canada, as defined by the TMA. In essence, “expungement” proceedings, described in Section 45 of the TMA, provide that anyone who pays the applicable governmental fees may trigger an inquiry by the TMO about whether the owner of the registration at issue can demonstrate it in fact used the mark in Canada, during the previous 3 years, in association with the types of products and services listed in the registration at issue. Failing to do so, the TMO can expunge (strike) the registration from the Canadien register. Now that the new TMA has been in force for 3 years, those who wish to get rid of certain recent registrations (i.e. the applications of which were filed around 2019) may start doing so in the upcoming months and years. Consequently, it seems more than likely we’ll be seeing an uptick of the number of expungement proceedings in Canada. After all, given how cheap this is, compared to actual court proceedings, it remains one of the best tool at our disposal when confronted with a trademark registration we may want to get rid of.
Though Canada’s registration system did away with lots of formalities meant to confirm applicants actually used their marks, the use requirement is alive and well in Canada. Whatever the TMA may say, the legal basis for the existence of trademarks (registered or not) does remain “use”, in Canada. As such, though a registration is useful, it’s important to understand that our jurisdiction is not like others where registration is what creates rights in a trademark. Though one may obtain a Canadian registration without use, keeping it may be trickier. Registrants beware!