Answer ... The length of the initial term of registration is 10 years, as is the length of subsequent renewal terms.

Given that the renewal term prior to the June 17, 2019 changes to the Trademark Act was previously 15 years, any trademark that was due for renewal and renewed prior to June 17, 2019 is still valid for a 15 year term – the term for renewal will become 10 years as of the next renewal.

Answer ... A renewal fee must be paid every 10 years and is dependent on the number of classes of goods or services being renewed. If the trademark registered prior to adoption of the Nice Classification and the goods and/or services are not yet classified, they must be classified at renewal or after receiving a notice from the Office of the Registrar of Trademarks (which is sent following the renewal with one class fee paid). The renewal fee must be submitted:

• no earlier than six months before the expiry of the initial period or renewal period; and
• no later than:
• • six months after the expiry of the initial period or renewal period; or
  • if later, two months after a renewal notice.

Where the goods and/or services are not yet classified, the timeframe for submission of a portion of the renewal fee may be longer.

Answer ... The registration of a trademark is invalid if:

• the trademark was not registrable at the date of registration;
• the trademark is not distinctive at the time proceedings bringing the validity of the registration into question are commenced;
• the trademark has been abandoned;
• the applicant for registration was not the person entitled to secure the registration; or
• the application for registration was filed in bad faith (Section 18(1) of the Trademarks Act).

Additionally, as per Section 18.1 of the Trademarks Act, the registration of a trademark may be expunged by the Federal Court on the application of any person interested if the court decides that the registration is likely to unreasonably limit the development of any art or industry.

Answer ... Once three years have elapsed since the date of the trademark registration, the Registrar shall, at the written request of any person that pays the prescribed fee or on his own initiative, require the registered owner of the trademark registration to furnish within three months an affidavit or a statutory declaration showing use of the goods and/or services in Canada at any time during the three-year period immediately preceding the date of the notice. If there is no use in this three-year timeframe, the registered owner must specify:

• the date on which the trademark was last so in use; and
• the reason for the absence of such use since that date.

If the trademark is not used within the three-year timeframe and the absence of use is not due to special circumstances, the registration of the trademark will be expunged (or the portion of goods and/or services to which the non-use proceeding relates will be removed from the registration).

Answer ... A third party may seek cancellation of a trademark registration through a Section 45 non-use proceeding (as explained in question 8.4) by written request to the Office of the Registrar of Trademarks, including payment of the prescribed fee.

Cancellation of a trademark registration for any of the grounds listed in the response to question 8.3 must be brought before the Federal Court.

Answer ... A decision of the Registrar relating to a Section 45 non-use proceeding can be appealed to the Federal Court:

• within two months of the date on which notice of the decision was dispatched by the Registrar; or
• within such further time as the court may allow, either before or after the expiration of the two months.