On 1 January 2025, the Canadian Intellectual Property Office (CIPO) launched a pilot project that allows it to unilaterally start non-use cancellation proceedings against trade mark registrations that are more than three years old. The project aims to clear the register of trade marks that are unlikely to be used in Canada. Sanjukta Tole provides a report for Class 46.

CIPO is targeting older registrations based on use in Canada or where Declarations of Use were filed. Any registrations less than three years old or any new extensions of older registration that have issued for less than three years will not be subject to this pilot project.

Evidence of use

Once CIPO issues a notice of cancellation against a registration, the registrant must provide affidavit evidence of use of the mark with each of the goods and/or services in the registration that are the subject of the notice.

It is critical that foreign brand owners have agents appointed to their registrations in Canada as CIPO will not typically communicate with registrants that have foreign addresses.

The affidavit evidence must be filed within three months of receiving the notice with one two-month extension of time as of right. The relevant period for use is three years prior to the date the proceeding is commenced by CIPO. There is no cross-examination on the evidence.

Proceedings

CIPO will discontinue the proceeding if (a) a registrant demonstrates the use of the mark with all the goods and/or services or (b) demonstrates use with some of the goods/services and deletes the ones not in use either voluntarily or following notice from CIPO identifying goods/services not in use.

If a registrant disagrees with CIPO’s findings, it can file written arguments and/or attend a hearing.

If a registrant is seeking to maintain a registration despite non-use due to special circumstances, the proceeding cannot be discontinued. Instead, a decision will be issued by CIPO on the acceptability of the excuse for non-use.

Any decision rendered by CIPO in the proceeding may be appealed to the Federal Court of Canada.

Advice for brand owners

When reviewing use of the mark in Canada, brand owners should keep in mind that the definition of use has a specific statutory definition in the Trademarks Act, R.S.C. 1985, c. T-13, particularly with goods.

The mark must be brought to the customer’s attention when the registered goods are transferred to the customer in the normal course of trade. The best evidence is having the mark appear on the goods, on labels or other materials attached to the goods and on product packaging.

Ancillary materials such as point-of-purchase materials or invoices can demonstrate use if they provide notice of the mark to the customer when the goods are transferred. The use of a mark on a website alone, for example, would not necessarily work by itself for goods but it may demonstrate use with services, which is easier to prove.

Brand owners need to remember that it is imperative to retain updated samples of use every few years and maintain sales figures and licensing documents in three-year windows for the purposes of this proceeding, although an ongoing archive of use is the best approach to counter such proceedings.

To protect against possible non-use proceedings from CIPO, brand owners with long standing registrations in Canada should review their portfolios to ensure that they have used their marks in Canada with at least some of the goods and services in the registration that are core to the business so that registrations, if selected by CIPO, can be sustained.

Thought should also be given to whether additional applications need to be filed in Canada to cover any new products and services that may now be associated with such trade marks or where the marks themselves have changed.

With examination wait times falling swiftly, it is a good time to consider revisiting portfolios in Canada.

Sanjukta S Tole is a Partner of Dickinson Wright in Toronto and a member of the MARQUES International Trade Mark Law and Practice Team