As mentioned in our previous posts (here and here), amendments to the Canadian Trademarks Act and Trademarks Regulations came into force on 1 April 2025.
The amendments included a new mechanism for challenging official marks that are owned by entities that no longer exist or are not public authorities.
On 1 April 2025, the Canadian Intellectual Property Office ("CIPO") released a practice notice detailing CIPO's practice with respect to this new mechanism.
In brief, requesting parties are now able to submit requests to the Registrar of Trademarks to give public notice that s. 9(1)(n)(iii) of the Trademarks Act (which prohibits the adoption of any mark consisting of, or so nearly resembling as to be likely mistaken for, an official mark) does not apply to a particular official mark. Upon payment of the prescribed fee (currently $325), the Registrar will review the request.
The Registrar may refuse the request in certain circumstances, but otherwise will send a notice to the public authority requesting that it provide evidence of its public authority status. Such evidence must be provided within 3 months (subject to extensions of time in exceptional circumstances).
If the holder of the official mark fails to provide evidence, the Registrar will then give public notice that s. 9(1)(n)(iii) of the Trademarks Act does not apply with respect to that mark.
The practice notice is available here.
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