Post-Registration Matters, Renewals and Recordals
This domain tests what happens after registration: keeping the registration alive, recording changes, licensing and responding to non-use or invalidity attacks.
Term and renewal
A registration lasts ten years and is renewable under s. 46. The renewal fee must be paid in the prescribed window before expiry; if it is not paid, the registration may expire. Do not assume automatic renewal or an unrestricted grace period. Diarize the expiry date and the opening of the renewal window.
Recordals
Assignments must be in writing and signed by the assignor. Changes of name or address, licenses and security interests should be recorded. Recordal is not generally a condition of validity, but an unrecorded assignment can create ownership and priority problems, especially when the registered owner of record must respond to a s. 45 notice. A license must be in writing; licensee use may be deemed use by the owner if the license supports that conclusion.
Worked example
An owner assigns a registered mark to a successor but does not record the assignment. The successor later licenses the mark to a manufacturer. A s. 45 notice is issued to the registered owner of record. The successor may struggle to prove use by the licensee unless the assignment, license and chain of title are documented and the records show controlled use. Recording the assignment promptly and confirming the license in writing avoids this problem.
Section 45 and section 57
Section 45 is a summary expungement proceeding. Any person may request it; the owner must show use in Canada during the three-year period before the notice for each good or service, or special circumstances excusing non-use. Section 57 is a Federal Court action for invalidity. Section 45 does not decide validity generally; it decides non-use.
Traps
Missing the renewal window; treating a license as valid without a written agreement; failing to show use for each good or service in s. 45; confusing s. 45 with s. 57; and ignoring name or address changes that affect service.