CIPO is Launching Pilot Project on Registrar-Initiated Non-Use Trademark Expungement Proceeding

Release Time：2025-01-17 15:12Author：Views：3

Pursuant to the authority under section 45 of the Trademarks Act (the Act), the Canadian Trademarks Opposition Board (TMOB) is starting a pilot project whereby the Registrar of Trademarks (the Registrar) will proactively send a limited number of section 45 notices against trademark registrations to help provide insight into how many registered trademarks are no longer in use, ensuring that the Register of Trademarks accurately reflects trademarks that are in use, and in association with the goods and services listed in the registration. This is a priority for the Registrar for efficient use of resources, promoting fair competition and maintaining the integrity of the trademark system.

Phase 1 of the Pilot Project

Selection of registrations

Beginning in January, the Registrar will issue monthly batches of section 45 notices against randomly selected registrations, requiring the owners of registered trademarks that have been on the Register for over three years, to submit evidence of trademark use or, where applicable, justification for non-use based on special circumstances. Registrations will be selected randomly from the following categories:

1. registrations based on use;

2. registrations based on proposed use for which a declaration of use was filed;

3. registrations based on use and registration abroad;

4. registrations with multiple bases;

5. remaining registrations registered for more than three years.

Changes to the standard proceeding

New tools have been developed and modifications to the standard section 45 proceeding have been implemented to ensure a more efficient and cost-effective process:

1. Guide to preparing an affidavit or statutory declaration in section 45 proceedings along with a Sample affidavit for section 45 proceedings to assist owners of registered trademarks (registered owners) who receive a section 45 notice.

2. Registered owners will be asked to correlate evidence with each of the goods and services to facilitate efficient processing by the Registrar.

3. In straightforward cases, the Registrar may offer to discontinue the section 45 proceeding on the basis of the owner’s consent (e.g. where the evidence clearly indicates that the trademark remains in use).

4. At a registered owner’s election, hearings could be scheduled at a mutually convenient time between the Registrar and the registered owner.

Data on the pilot project

As the Registrar-initiated section 45 proceedings progress, relevant data on the pilot project will be published. For the purpose of comparison, data related to section 45 proceedings initiated by third parties will also be published. By presenting both sets of data, the TMOB aims to offer a transparent view of how the pilot project performs in comparison to the established process.

Phase 2 of the Pilot Project

Once a statistically significant number of proceedings have concluded, the TMOB will organize consultations to gather feedback on:

1. whether this pilot project should continue; and if so,

2. whether there are particular types of registrations which should be targeted;

3. whether section 45 notices should be issued against all or only some of the registered goods and services; and,

4. whether the Registrar should perform an investigation against a selected registration and only issue a section 45 notice if the investigation does not show any use of the trademark in Canada.

Data on Registrar-initiated section 45 proceedings

Month	Number of notices to be issued	% of registrations expunged due to failure to respond	Number of proceedings discontinued	Number of registrations maintained
January 2025	100	N/A	N/A	N/A
February 2025	50	N/A	N/A	N/A
March 2025	50	N/A	N/A	N/A
April 2025 and onwards	TBD	N/A	N/A	N/A