Sotos LLP

Clearing Out the “Deadwood”: CIPO’s Pilot Project Puts Section 45 on the Fast Track

by John Yiokaris and Bailee Kleinhandler

The Canadian Trademarks Opposition Board announced the Pilot Project in December 2024. Beginning January 2025, the Canadian Intellectual Property Office (“CIPO”) will send notices to registered trademark owners asking them to prove that their trademarks are actively in “use” in Canada. If the registered trademark owner is not able to provide proper evidence, the trademark registration may be cancelled.

Background

Unlike other countries, Canada does not require trademark owners to provide evidence of use of their trademarks prior to a mark being registered or to file any evidence during the lifespan of the registration that the trademark owner continues to use the registered mark.

Under Section 45 of the Canadian Trademarks Act (the “Act”), the Registrar can ask a trademark owner to prove that it has been actually using its trademark in Canada over the past three years. If the trademark owner is not able to provide evidence that the trademark as been in use, and that there is no exceptional circumstances for the non-use, the trademark registration can either be changed to only cover the goods and services that are actually being used or the registration may be cancelled entirely.

Who will be examined?

Registered trademarks will randomly be picked from the following categories:

  • registrations based on use;
  • registrations that said they would be used in the future, and proof of use was given;
  • registrations that are used or registered in another country;
  • registrations that fall into more than one of these categories; or
  • registrations that have been registered for more than three years.

What is the purpose of the Pilot Project?

The goal of the Pilot Project is to ensure that the Trademark Register includes only trademarks that are actively being used in Canada. It is essentially cleaning up old or unused trademarks – as CIPO has stated, clearing out the “deadwood” from the Trademark Register.

The Pilot Project has three main goals:

  • make it easier and faster for businesses to register new trademarks;
  • help to maintain fairness by getting rid of unused trademarks that block new ideas for brands; and
  • keep the trademark system honest by ensuring the Trademark Register only shows active trademarks and what they are being used for.

How will the Pilot Project work?

The Pilot Project will happen in two steps.

Step 1: Starting in January 2025, CIPO will send out 100 notices. Then, in February and March 2025, CIPO will send out two more groups of 50 notices each. The notices will target trademarks that are over three years old, and will ask trademark owners to prove that they have been using their trademarks in Canada over the past three years.

Step 2: CIPO will ask the public for feedback on the project. CIPO is hoping to gather information on whether the process should be permanent and how it should work in the future.

How to respond to a notice?

To help trademark owners, CIPO has shared resources, such as a guide and sample affidavit, to help prepare evidence. However, CIPO warns that any evidence submitted will be made public, as required by Section 29(1)(f) of the Act. Trademark owners should therefore be careful not to include personal or sensitive business information that is not necessary and should redact the information before submitting. It is strongly recommended that you speak with legal counsel experienced in trademark matters to assist you in responding to any notice from CIPO.

Registered trademark owners can prove that their trademark was used in Canada in the last three years by submitting a detailed affidavit or statutory declaration, complete with exhibits and supporting evidence. This document should confirm that the trademark is being used in Canada and include examples to demonstrate how the trademark was used for all the goods and/or services listed in the registration.

If the trademark has not been in use, registered trademark owners can submit an affidavit or declaration explaining why the trademark has not been in use and if there were any special circumstances. The Registrar will consider:

  • how long the trademark was not used;
  • if the reason for not using the trademark was out of the owner’s control; and
  • if the owner plans to start using the trademark again soon.

Trademark owners must send their evidence demonstrating use within three months of getting the notice from CIPO. If the trademark owner fails to do so, CIPO may unilaterally cancel the trademark registration.

Why is this important?

With the Pilot Project sending out Section 45 notices more often, trademark owners need to be ready to prove that they are actually using their trademarks in Canada. This includes keeping copies of invoices, photographs of products, and marketing materials that show the trademark is being used with the goods and/or services that it is registered for. Trademark owners need to be proactive not only to protect their trademark but also to follow CIPO’s rules and requirements.

For more specific details on the Pilot Project, please see the Government of Canada’s practice note.

How can Sotos LLP help?

If you receive a Section 45 notice, want to review the status of your registrations, or have any other trademark related concerns, Sotos LLP can help. Specifically, we can assist in ensuring that your evidence is properly prepared and submitted to meet CIPO’s requirements.

At Sotos LLP, we have acted for hundreds of trademark owners in every aspect of protecting their intellectual property for more than 40 years. We have extensive knowledge of intellectual property issues, and regularly act in the procurement and licensing of trademarks, as well as in defending our clients’ trademarks rights and opposing trademark applications on behalf of our clients.

Please contact John Yiokaris at 416.977.3998 or jyiokaris@sotos.ca or Bailee Kleinhandler at 416.573.7311 or bkleinhandler@sotos.ca to discuss your intellectual property and trademark issues.

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