Starting in January 2025, the Canadian Intellectual Property Office (CIPO) launched a pilot project targeting the removal of unused trade marks from the Canadian Trade Marks Register. Under the initiative, the Registrar of Trade Marks will proactively issue cancellation proceedings under Section 45 of the Canadian Trademarks Act, requesting trade mark owners of randomly selected registrations to provide evidence of use or justification for non-use.

Key features of the pilot project

The CIPO’s pilot project focuses on trade marks that have been on the Register for over three years and fall into one of five categories:

1. Registrations based on current use.
2. Registrations based on proposed use, where a declaration of use was filed.
3. Registrations based on use and registration abroad.
4. Registrations with multiple classes.
5. Registrations that are over three years old since registration.

For the pilot, 100 Section 45 notices were issued in January 2025, with additional batches of 50 notices planned for February and March. The procedure involves the Registrar requiring owners to demonstrate evidence of trade mark use during the relevant period or to provide a justification for non-use due to exceptional circumstances. If no response is provided, the registrations will be cancelled, either in whole or for the specific goods and services for which use is not proven.

The project’s stated aims include ensuring the integrity of the Register, promoting fair competition, and providing an accurate reflection of trade marks in active use. Consultations are planned following the pilot’s conclusion to assess its effectiveness and determine whether the approach should be permanently adopted.

What is Section 45 of the Canadian Trademarks Act?

The pilot project is rooted in Section 45 of the Canadian Trademarks Act, which allows the Registrar to initiate expungement proceedings for trade marks not in use. This provision acts as a safeguard against trade marks that occupy space on the Register but do not serve their function of distinguishing goods and services.

The legal definition of “use” under the Trademarks Act requires that a trade mark be used in the normal course of trade, often demonstrated through its appearance on goods, packaging, or associated documentation. Exceptional circumstances for non-use may include regulatory delays or unforeseeable market conditions.

Are there any parallels in the UK & EU?

In the UK and EU, there are similar principles however the registrar does not actively seek to cancel trade mark registrations due to non-use. Under the UK Trade Marks Act 1994 and EU Trade Mark Regulation (EUTMR), trade mark registrations can be challenged and revoked if the mark has not been put to genuine use within five years of registration and there is no valid justification for non-use. The burden of proof lies with the trade mark owner to demonstrate use however the validity of the registration can only be challenged by a third party.

Implications for trade mark owners

The CIPO’s pilot project has several implications for businesses:

1. Increased compliance obligations

Trade mark owners must maintain comprehensive records to substantiate use. This includes evidence such as sales invoices, marketing materials, and distribution records.

2. Proactive auditing

Companies should regularly audit their trade mark portfolios to identify potential vulnerabilities. Ensuring that marks are in use for all registered goods and services can mitigate risks of cancellation.

3. Strategic registrations

Businesses registering trade marks in Canada should carefully assess the breadth of their applications. Overly broad filings may increase exposure to Section 45 proceedings if certain goods or services remain unused.

While the UK and EU do not currently adopt a similar proactive approach, trade mark owners should remain vigilant. The principles of use and revocation apply universally, and any shift toward more proactive enforcement in these jurisdictions would likely mirror the Canadian experiment.

Broader impact on trade mark law

The CIPO’s pilot project underscores the growing emphasis on the active use of trade marks as a cornerstone of fair competition and register integrity. By targeting unused registrations, the initiative aims to create a more dynamic marketplace where only actively used trade marks benefit from legal protection.

For businesses, this signals a shift from a register-and-forget approach to a more engaged management of intellectual property portfolios particularly the potential risks associated with unused registrations.

As this pilot progresses, it will be interesting to see how its outcomes influence the future of trade mark regulation both in Canada and internationally.

If you require advice regarding trade marks or the CIPO’s pilot project, please get in touch and speak to one of our attorneys.