The initiative seeks to reduce obstacles for businesses seeking to register new marks
The Canadian Intellectual Property Office (CIPO) will launch a pilot project requiring trademark owners to prove active use of their trademarks or risk losing their registrations.
Starting in January, CIPO will require trademark owners to demonstrate the active use of their trademarks in Canada. This pilot project, led by the Trademarks Opposition Board (TMOB), involves the proactive issuance of s. 45 notices under the Trademarks Act to registered trademark owners. Those who cannot provide evidence of use risk losing their registrations.
The Registrar of Trademarks aims to address inefficiencies in the trademark system by targeting trademarks that may no longer be in use. This initiative ensures the Canadian Register of Trademarks accurately reflects active trademarks, reducing obstacles for businesses seeking to register new marks. According to the registrar, trademarks that are registered but unused can complicate the registration process and impede fair competition by creating unnecessary barriers for businesses during trademark clearance searches. By maintaining a register that reflects only active trademarks and their accurate scope of use, the registrar seeks to uphold the integrity of Canada's trademark system.
Phase 1 of the pilot project will involve issuing monthly batches of s. 45 notices to randomly selected trademark registrations that have been on the register for over three years. These notices will require trademark owners to submit evidence of use or, where appropriate, justify non-use due to exceptional circumstances. Registrations selected for review will include various types, such as those based on actual use in Canada, foreign use and registration, or proposed use declarations.
The registrar has introduced new tools and updates to s. 45 proceedings to streamline the process. A guide and sample affidavit will be available to assist trademark owners in preparing their responses. Trademark owners must correlate evidence with specific goods or services associated with the registration. In clear cases where the evidence demonstrates ongoing use, the registrar may discontinue proceedings with the owner's consent. Hearings may also be scheduled at mutually convenient times to simplify the process for trademark owners.
CIPO plans to publish data on this pilot project alongside information about s. 45 proceedings initiated by third parties. After reviewing enough cases, the TMOB will consult stakeholders about continuing the project and making potential adjustments, such as targeting specific types of registrations or introducing investigative measures before issuing notices.
