Trademarks Owners Be Warned — Certain Services May Require Bricks-And-Mortar Location In Canada

The cautionary lesson emerging from a rash of Trademark Opposition Board decisions over the past several years is that owners of registrations for services, such as hotel services, without bricks-and-mortar establishments in Canada should ensure that their registrations also cover "reservation services", or other services that are rendered in Canada. Otherwise, such registrations may be at risk of expungement through summary non-use cancellation proceedings pursuant to Section 45 of the Trade-marks Act (the "Act"). That section permits any person to request the Registrar to send a notice to the owner of a registration more than three years old, requiring proof of use in Canada or extraordinary reasons to excuse non-use, failing which the registration will be expunged.