Canada's CIPO Launches Pilot Project to Enforce Section 45 of the Trade Marks Act: What It Means for Trademark Owners

Section 45 allows anyone to request the removal of a trademark registration from the Register of Trademarks if the owner is unable to show use of the trademark in Canada during the three-year period preceding the date of the Section 45 notice.

In other words, the Office is using the expungement/non-use proceedings as a tool to ensure that the Register will reflect the registrations that are effectively in use for the protected goods and services.

For the purpose of the pilot project, the Office will randomly select the marks to be addressed among: (i) registrations based on use, (ii) registrations based on proposed use for which a declaration of use was filed, (iii) registrations based on use and registration abroad, (iv) registrations with multiple bases and, last but not least, (v) registrations that have been on the Register for more than three years.

The notice will be notified to the owner of the trademark and to its representative; the registered owner has three months from the date of the Section 45 notice to file its evidence with the Registrar.

In case the owner is unable to file evidence for all or some of the listed goods and services, the registration will be entirely or partially expunged from the Register.

After two rounds of notices served between January and March 2025, the CIPO will proceed to gather feedback, including whether it will discontinue this practice or not.

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.

Authors: Paola Ruggiero and Sara Consorti