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Canadian trademark registrations last for 10 years and are renewable upon the payment of a maintenance fee. However, lack of use in the marketplace may render your registration subject to possible expungement.
Traditionally, an application for trademark expungement was initiated by an interested person seeking expungement through the Canadian Trademarks Act. However, since January of 2025, the Registrar of Trademarks has started to randomly select trademark registrations for possible expungement.
If your registration is subject to possible expungement, you will have three months to submit evidence of use in association with registered goods and services. In the absence of evidence of use, or exceptional circumstances, your registration could be expunged, in whole or in part.
Ferrari Testarossa – A Cautionary Tale
A similar expungement proceeding was recently heard in Europe where Ferrari's "TESTAROSSA" trademark narrowly avoided expungement.
In that case, the EUIPO sought to expunge Ferrari's trademark due to a lack of use in that Ferrari no longer sold models under the TESTAROSSA trademark. Ferrari appealed to the European Court of Justice who maintained the trademark by recognizing the sale of second-hand cars with a registered mark as genuine use in the "normal course of trade."
Key Takeaways for Businesses
Trademarks are valuable assets for brand owners. Canadian businesses must be proactive in ensuring proper, continuous use is carried out and that evidence of use is collected and saved.
Best practices to maintain avoid expungement may include:
- Ensuring trademarks are marked directly on goods or their packaging and/or prominently displayed close to the goods wherever they are sold.
- Making sure trademarks are prominently displayed in the advertising and performance of services, including where the services are performed.
- Maintaining records relating to the sale of goods and the performance and advertising of services, including sales volumes, dated photographs, invoices, shipping documents and screen captures that may establish use of the trademark
- A periodic review should be done to confirm the use of the marks with the registered goods and services and to take steps as necessary to gather and maintain the required evidence of use.
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.
