Canada: changes brand owners need to consider

There have been some key developments to trade mark law and practice in Canada, including a pilot of a new non-use scheme. We explore the key developments below. 

Unilateral cancellation notices

The phrase "use it, or lose it", is even more important now in Canada.

Typically, a registration can be cancelled based on non-use if a third party files an action. In an attempt to get rid of "deadwood", the Canadian Office, launched a pilot earlier this year issuing notices of cancellation, of its own volition, against trade mark registrations for possible non-use. 

The aims are to:

• ensure the trade mark register accurately reflects those marks in use 

• enable efficient resource utilisation 

• promote fair competition

• maintain the integrity of the trade mark system. 

The Canadian Office started to issue monthly batches of cancellation notices to randomly selected registrations older than three years. The trade mark owner then had to submit evidence showing that the registration has been in use for the three years immediately preceding the notice or provide justifications for non-use, or risk losing its registration. 

Once the pilot ends, the Office will consider whether to continue to file such notices. Meanwhile, the owners of trade mark registrations more than three years old in Canada should bear in mind the risk of being asked to rep-emptively prove use.

Costs awards

If requested, the Registrar may issue a costs award against a party in opposition proceedings.

Punitive costs may now be awarded in the final decision, up to 10 times the official fees, and can be cumulative if more than one ground applies ie there is:

• unreasonable behaviour causing undue delays or expenses 

• late cancellation of the hearing 

• divisional applications forcing multiple oppositions 

• bad faith when the ground of opposition was upheld.

Proof of use in infringement proceedings

With an aim to eliminate infringement proceedings filed in bad faith, the owners of trade mark registrations less than three years old must now demonstrate use of their registration in Canada or special reasons for non-use.

This does not mean that a trade mark registration will be cancelled if use cannot be show. The aim is to prevent enforcement of newly-registered trade marks not in use.