Section 45 Pilot Project
14 Feb, 2025
Section 45 Pilot Project
14 Feb, 2025
SECTION 45 PILOT PROJECT: SUMMARY EXPUNGEMENT OF “DEADWOOD” TRADEMARKS
Pursuant to section 45 of the Trademarks Act, trademark registrations in Canada are vulnerable to full or partial expungement if, at any time, the registrant cannot produce evidence demonstrating use within the last three years at the request of the registrar.
Beginning in January 2025, the registrar launched a pilot project to proactively remove marks from the trademark register that are no longer in use. The hope is to more efficiently clear marks regarded as “deadwood” from the trademark register and to amend registrations to more accurately state the scope of associated goods and services.
What is the scope of the project?
The pilot will consist of two phases:
- Phase one: data collection; and
- Phase two: consultation and feedback.
During phase one, the registrar will issue section 45 notices against a number of randomly selected trademark registrations.
Consultations will be organized in phase two of the pilot project once a ‘statistically significant’ number of proceedings have concluded, likely in 2026 or 2027. The consultations in phase two will be directed at:
- whether the pilot project should continue indefinitely?
- whether there are particular types of registrations which should be targeted?
- whether section 45 notices should be directed against all or only some of the associated goods and services?
- whether the registrar should conduct a preliminary investigation before issuing a section 45 notice and issue a section 45 notice only if the investigation discloses no evidence of use in Canada?
Is your registration subject to Registrar-initiated section 45 proceedings?
Outside this pilot project, section 45 notices are routinely issued by the registrar upon request from a third party who is interested in registering the mark, or a confusingly similar mark, for their own business.
In this pilot project, the registrar will not issue a section 45 notice against registrations for which “good reason” exists not to do so. Good reasons not to issue a notice may include:
- where the trademark registration is already the subject of a section 45 proceeding pending before the registrar, or on appeal;
- it is within three years of the date of issuance of a previous section 45 notice, where proceedings led to a final decision under section 45 of the Trademarks Act; or
- the registrar considers that issuing the notice would be frivolous.
What can registrants do to protect their registrations and to resolve a proceeding under the project?
First, registrants should ensure that they actively use their registered trademarks in the form in which they are registered at the point of sale in Canada for all the goods and services identified in their registrations, where possible.
To ensure that registrants receive any section 45 notice issued against a registration, registrants should ensure that they: (a) keep their address up-to-date for each registration; or (b) appoint a reputable trademark agent for each registration.
Section 45 proceedings unfold in a substantially similar fashion, whether initiated by a third party or by the registrar. Notably, however, where the registrar is of the opinion that the evidence clearly indicates the use of the trademark, they may offer to discontinue proceedings with the consent of the registered owner.
Where the registrar is of the opinion that the evidence appears to clearly show use in association with only some goods or services, they may offer to discontinue proceedings upon receipt of the owner’s consent and a request to delete the remaining goods or services.
Registered owners against whom section 45 notices are issued under this pilot project should also be aware that the Registrar will generally waive the fee requirement when requesting extensions of time. To
For more information on this pilot project, please visit the following URLs:
Disclaimer: The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.