The Trademarks Opposition Board wants to clear deadwood from the register

January 14th, 2025

In Canada, the trademark registration process does not require proof that the trademark is currently being used in the marketplace. When it comes time to renew a registered trademark, which happens every ten years, all that’s needed is to pay the applicable government fees, and you’re good to go.

It is up to competitors to challenge a registration for non-use by filing a request for a summary trademark expungement. This procedure requires the trademark owner to provide evidence of trademark use within the last three years. If the evidence isn’t deemed sufficient, the registration is expunged.

But things may be about to change.

On December 12, the Trademarks Opposition Board (the “TMOB”) published a practice notice that conveyed its intention to break from its hitherto passive role. As part of a pilot project, the TMOB will proactively send notices of summary expungement proceedings against randomly selected registrations.

The pilot project calls for 100 notices to be sent out in January 2025, 50 in February 2025, and 50 in March 2025.

Although the project is small-scale for now, it reminds us of the importance of adopting a proactive trademark management strategy rather than deferring decisions until renewal time.

Here are a few questions to ask yourself regularly:

  • Do we have enough evidence in our files to prove the use of our strategic trademarks?
  • Do our registered trademarks still adequately reflect the marks used in the marketplace?
  • As we update our logos, do the registered trademarks still provide adequate protection for the new versions?
  • Is a rebranding exercise a good time to file new trademark registration applications?
  • Which brands in our portfolio could be the target of an expungement proceeding?

Do you need to update your files, respond to a TMOB notice, or get general advice on your trademarks? Reach out to us. Our team is here to help you manage and protect your brands every step of the way.