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Trademarks

Are your trademark registrations at risk?

  • Caroline Guy
By Caroline Guy Lawyer and Trademark Agent
Trademark owners must be vigilant considering the new procedures implemented by the Canadian Intellectual Property Office (CIPO).

Background of the Pilot Project

CIPO has launched a pilot project on trademark expungement proceedings. Beginning in January 2025, the Registrar will issue trademark expungement notices on its own initiative. Owners of registered trademarks will have three months to respond to the notice. Section 45 of the Trademarks Act (TMA) already provided that the Registrar had the authority to carry out this procedure, but in practice, requests for expungement were always initiated by a third party.

Phase 1: Notice to Expunge

In the initial phase, starting in January, the Registrar will issue monthly batches of section 45 TMA notices to randomly selected registrations that have been on the Register for more than three years. These notices will require the registered trademark owners to provide proof of use of their trademark in Canada or justify non-use due to special circumstances.

Phase 2: Consultation and Adjustment

In the second phase, consultations will be held to determine whether the project should continue, and whether any adjustments are necessary, such as targeting certain types of registrations or conducting preliminary enquiries before issuing notices. For more information on this pilot project, please consult the CIPO website: Pilot project on the Registrar-initiated section 45 expungement proceeding (Pilot project on the Registrar-initiated section 45 expungement proceeding).

Goal of the Project

The goal of this CIPO initiative is to help provide an overview of how many registered trademarks are no longer in use. This pilot project is in line with the Registrar's priority of ensuring that the Register of Trademarks correctly reflects the trademarks that are in use in association with the goods and services listed in the registration.

Proof of Use Required

The evidence of use to be provided in this summary proceeding need not be exhaustive, but it must show that the trademark has been used in Canada within the three years preceding the notice in association with all the goods and services listed in the registration. Proof must be in the form of an affidavit or a statutory declaration with supporting documents. Goods or services for which evidence of use has not been provided will be expunged from the registration unless the Registrar is satisfied that the absence of use is due to exceptional circumstances

Advice for Registered Trademark Owners

It is important for trademark owners to keep their contact information up to date with the CIPO, especially if they are not represented by a trademark agent. If you receive a notice of expungement or have any questions or requests regarding your trademarks, please do not hesitate to contact our trademarks team.

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