The Canadian Intellectual Property Office (CIPO) has launched a pilot program aimed at reducing the number of unused trademarks on the Register of Trademarks.
Section 45 of the Trademarks Act
Under section 45 of the Trademarks Act, anyone – including CIPO – can request the removal of a trademark registration from the Register on the basis that it has not been used in the last three years.
The Program
As part of its pilot program, CIPO will randomly select registered trademarks for review from:
i) registrations based on use;
ii) registrations based on intended use, for which a declaration of use was filed;
iii) registrations based on foreign use and registration;
iv) registrations with multiple bases; and
v) registrations that have been on the Register for more than three years.
CIPO will formally notify the trade mark owner and its representative and require them to submit evidence of use within a three month period. Failure to provide sufficient evidence across the claimed goods and services may result in partial or entire expungement of the trademark from the Register.
CIPO plans to issue two rounds of notices between January and March 2025, after which it will gather feedback to decide whether to continue, modify, or discontinue the program.
Advice for Trademark Owners
Trademark owners should assess if their registrations are properly used in Canada according to the relevant law and practice and ensure an adequate record-keeping of the evidence to avoid the loss of their worthwhile registrations.
Trademark owners are advised to proactively review their portfolios to ensure that all registered marks are actively used in Canada, across all of their claimed goods and services, and that proper documentation is kept of their use.