Canadian Trademarks Board Removes Software and Numerous Goods from Passmore Inc. Registration Following BLG Challenge

The Trademarks Opposition Board (TMOB) recently issued a ruling in the case of Borden Ladner Gervais LLP v Passmore Inc., 2026 TMOB 116, resulting in a substantial amendment to Passmore Inc.’s trademark registration. The proceeding was initiated by BLG under section 45 of the Trademarks Act, 1985, which permits expungement actions when a registered trademark has not been used in Canada for certain goods or services within a three-year period.

On February 21, 2025, at BLG’s request, the trademarks registrar issued a notice under section 45 concerning Passmore Inc.’s mark. Passmore was required to demonstrate use of the mark in Canada for the specific goods and services listed in the registration during the three-year period immediately preceding the notice date, spanning February 21, 2022, to February 21, 2025. If the mark had not been used, Passmore needed to provide the date of last use and explain the reasons for non-use.

Passmore Inc.’s president submitted an affidavit in response, detailing the corporation’s business activities. The affidavit described sales of computer, business, and consulting goods and services to business owners and corporations. It further explained that clients could acquire services through Passmore’s volunteer engagements with community boards, not-for-profit and industry associations, and the entrepreneur-in-residence role at the University of Western Ontario’s Richard D. Ivey School of Business in London, Ontario.

After reviewing the evidence, the TMOB amended the registration by deleting all goods and certain services listed under items (3) to (7), (10), (11), (14) to (25), (29), (30), (32) to (50), and (52) to (57). These deletions included goods and services identified in the affidavit as unused during the relevant period, with no reasons provided for the lack of use.

Conversely, the Board maintained the registration for services enumerated in items (1), (2), (8), (9), (12), (13), (26), (27), (28), (31), (51), and (58). This decision was supported by invoices demonstrating sales of these services within the relevant timeframe. The TMOB noted that the mark, depicted in all capital letters followed by the ® symbol, appeared clearly distinguishable in the service descriptions on the invoices.

However, the TMOB found that the affidavit did not establish use of the mark for any of the listed goods, including computer software. Regarding software, the Board emphasized that even if an invoice bore the mark, the goods themselves or their packaging must display the mark to satisfy use requirements.

The TMOB further observed that Passmore Inc.’s president did not assert that invoices were provided to customers during the transfer of goods or that the mark was otherwise associated with the goods. This lack of evidence led to the deletion of software and other goods from the registration.

This ruling underscores the importance of clear and demonstrable use of trademarks on goods or their packaging, beyond mere invoicing, to maintain registration rights in Canada. It also highlights the rigorous scrutiny applied by the TMOB in expungement proceedings under section 45 of the Trademarks Act.

Legal practitioners and trademark owners should take note of the evidentiary standards required to sustain registrations and the potential consequences of non-use within the statutory period.