Fasken has compiled succinct answers to a number of frequently asked questions about administrative non-use trademark cancellation proceedings in Canada to provide a quick overview of essential aspects. These questions and answers are found in the Fasken Frequently Asked Questions (FAQ) About Administrative Non-Use Trademark Cancellation Proceedings in Canada.
Understanding how these proceedings are conducted in Canada is becoming increasingly important. In recent years, there has been a notable increase in non-use trademark cancellation proceedings before the Canadian Trademarks Opposition Board (the "Board"). In the 2022-2023 period, 745 notices of administrative cancellation proceedings were issued and the Board rendered close to 600 decisions.1
Administrative cancellation proceedings can have significant consequences for both registered trademark owners and trademark applicants. For registered trademark owners, failure to demonstrate use after receiving a notice from the Board usually results in the trademark registration's cancellation. For applicants, such proceedings are a tool to expunge unused trademarks cited against applications.
Establishing use is at the heart of administrative cancellation proceedings. In Canada, subtle but important differences exist between use of a trademark in association with goods and use in association with services. Building a good trademark strategy based on a sound understanding of these proceedings is essential.
Among other subjects, our newly launched FAQ webpage answers questions about the:
- Strategic importance of administrative cancellation proceedings in Canada;
- Steps involved in the cancellation process;
- Timing, including length, applicable deadlines, and the availability of extensions;
- Costs associated with filing an administrative cancellation proceeding;
- Procedural considerations, such as whether evidence or a power of attorney are necessary;
- Evidence of trademark use in association with goods and services;
- Evidence of trademark use by licensees;
- Special circumstances excusing non-use;
- Burden of proof in administrative cancellation proceedings;
- Protective and confidentiality orders; and
- Appeal of decisions in administrative cancellation proceedings.
Answers to such questions are not always obvious. Administrative trademark cancellations in Canada will not necessarily proceed in the same fashion as those in other countries. For example, in accordance with Canada's two official languages, these proceedings are held in either English or French, or both. Other details are more subtle, but no less important. Of note, certain special circumstances may allow registered trademark owners to maintain their registration despite an absence of use. Overlooking a step, missing a deadline, or failing to properly establish use or special circumstances excusing non-use could be fatal to trademark registrations in Canada.
Footnote
1. Details available here: https://ised-isde.canada.ca/site/canadian-intellectual-property-office/en/canadian-intellectual-property-statistics/trademark-statistics-2022-2023.
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.