The Canadian Intellectual Property Office (CIPO) recently announced a pilot project starting in January 2025 aimed at clearing the trademark registry of unused trademarks. This move is expected to impact trademark owners across Canada, and it’s a timely reminder to ensure your trademarks in are in active use.
If you own a registered trademark - or are considering registration - it’s important to understand the implications of this initiative and how to protect your intellectual property.
CIPO’s decision to target and expunge trademarks that are not in use reflects a broader effort to maintain an accurate trademark registry that reflects the active and legitimate use of intellectual property.
This initiative also aims to help businesses trying to create new brands. An unused registered trademark may be identified as an obstacle during trademark availability searches as it can block new, confusingly similar trademark applications. Of course, if a registered trademark is no longer in use, the applicant of the new trademark registration can attempt to expunge the trademark, potentially paving the way for their own application to proceed. But the potential cost and uncertainty relating to whether an unused registered trademark will successfully be expunged, may discourage businesses to select a certain trademark.
Simply renewing your trademark every 10 years may not be sufficient to keep your trademark registration according to Canadian trademark law and you may be vulnerable to expungement if it cannot be proven that your trademark has been used in the ordinary course of trade.
If a trademark has been registered in Canada for a period of three years or more, CIPO or any third party can request that a registration be expunged (i.e. removed from the Register of Trademarks) or amended for non-use, by asking the Registrar of Trademarks to send a notice to the owner of that trademark, as per section 45 of the Trademarks Act.
This notice requires the trademark owner to demonstrate use of their trademark in the preceding three years. Failure to respond or provide sufficient evidence could lead to the trademark’s removal from the register.
It is expected that, as a first step, CIPO will issue 100 Section 45 Notices in January 2025 and 50 in each of February and March. The number of notices that will be issued from April 2025 onward is yet to be determined.
Proper use is your best defence! If you receive a Section 45 Notice regarding your registered trademark, you’ll have 3 months to submit evidence that you have used the trademark in the 3 years preceding. This evidence should be in the form of an affidavit or a statutory declaration and supporting documentation such as photos, documents or other exhibits of use that support your claim.
For proper use, a trademark must be actively and continuously used in the ordinary course of trade in Canada. Examples could be:
Simply registering a company name, purchasing a domain, or using a trademark on letterhead does not constitute use under Canadian law. To maintain your registration, your trademark must be actively associated with the goods or services listed in its registration.
Whether you’re seeking strategies to properly use your trademark, or need expert support responding to a Section 45 Notice, we can help.
Connect with us today to safeguard your trademarks and ensure you’re fully prepared for CIPO’s evolving trademark registry requirements.