As part of Canada’s major trademark legislative overhaul that began in June 2019, a few legislative amendments were left to come into force at a later date. One of these provisions, new section 53.2(1.1) of the Trademarks Act, will come into force once Bill S-6 is passed.
Bill S-6 is currently making its way through Parliament, having had its second reading in the House of Commons in May 2023.
Once Bill S-6 is a passed, it will usher in a new amendment to the Trademarks Act that will require trademark owners to prove a registered mark is in use (or prove excusable non-use) before the registration becomes vulnerable to summary cancellation, to be entitled to relief under sections 19, 20 or 22 of the Act, which prohibit infringement or depreciation of goodwill. The language of section 53.2 (1.1) of the Act provides:
If, within a period of three years beginning on the date of registration of a trademark, the owner of the registered trademark makes an application claiming that an act has been done contrary to section 19, 20 or 22, the owner is not entitled to relief unless the trademark was in use in Canada at any time during that period or special circumstances exist that excuse the absence of use in Canada during that period.
After second reading is completed, Bill S-6 will proceed to consideration in committee and then a third reading by the House of Commons before receiving Royal Assent. We continue to monitor the progress of the Bill and will provide further reports as it moves its way through Parliament.
