NEW CIPO PILOT PROJECT ON TRADEMARK CANCELLATION PROCEEDINGS: ROBIC ANSWERS YOUR QUESTIONS
Catherine Bergeron and Stéphanie Karam
ROBIC
LAWYERS, PATENT AND TRADEMARK AGENTS
Since January 2025, the Canadian Intellectual Property Office has been running a pilot project that could have an impact on your trademarks or those of your clients.
Each month, the Registrar of Trademarks randomly selects marks that have been registered for more than three years in Canada, and asks their owners to submit evidence of use of their trademark in association with each designated product and/or service, or to submit justifications for non-use based on exceptional circumstances. In the absence of use or exceptional circumstances, the selected registrations could be cancelled, in whole or in part.
Aware of what is at stake for trademark owners, we have prepared these Frequently Asked Questions to provide you with clarification on this pilot project and its potential impacts on your trademark registrations in Canada.
QUESTIONS AND ANSWERS ON CIPO’S PILOT PROJECT:
Trademarks targeted to cancellation proceedings initiated by the Registrar are those registered for at least 3 years in Canada (whether by way of a national filing or a Canadian designation under an international registration). Trademark registrations will be selected randomly.
The Registrar’s notice (issued pursuant to Section 45 of the Trademarks Act (the “Act”)) will be sent to the address of record of the registered owner, with copy to the registered owner’s recorded trademark agent in Canada, if any. If no Canadian agent is appointed to a trademark on the register, the notice will only be sent to the owner of the registration directly.
It is therefore strongly recommended to have an appointed Canadian agent on the register to avoid any confusion, or even a potential loss of rights. Please note that the appointment of our firm as agent on the register is done at no cost.
The registered owner must furnish evidence of use of its mark within 3 months from the date of the notice issued by the Registrar. A 2-month extension of time is available, if need be.
The owner of a selected trademark will have to furnish evidence of use of its trademark in Canada at any time during the 3 years preceding the date of the notice (the Relevant Period) in respect of each of the goods and/or services covered by the registration.
If the trademark has not been used within the Relevant Period, the owner can show evidence of the last date at which the trademark was used in Canada, and the reason(s) (special circumstances) for the absence of use since that date. “Special circumstances” means circumstances or reasons that are unusual, uncommon, or exceptional.
If no such evidence is provided, the trademark may be cancelled.
Evidence must be submitted to the Registrar by means of an affidavit or statutory declaration. The type of evidence may vary on a case-by-case basis, including whether the evidence must demonstrate use of the trademark in association with goods or services.
To demonstrate use of a trademark in association with goods, the Act requires that the trademark be displayed on the goods themselves, on the packaging in which the goods are distributed, or that it be otherwise associated with the goods at the time of sale. To demonstrate use of a mark in association with services, it is sufficient to demonstrate that the mark was used or displayed in the performance or advertising of those services in Canada.
The affidavit or statutory declaration must contain sufficient facts, with supporting material, to allow the Registrar to establish that the trademark has been used in Canada, in the normal course of trade. The evidence may include, for example:
- A sample of invoices during the Relevant period, showing sales in Canada;
- Sales figures in Canada for the goods/services under the registered trademark;
- Photographs of the trademark displayed on the goods or their packaging, labels, etc.;
- Website printouts, social media printouts, billboards, signs, coupons, flyers, ads in a periodical, price lists or catalogues distributed in Canada;
- Any other evidence demonstrating the sale of goods or advertising of services in Canada.
In any event, we will be able to advise you on the best strategy according to the specific circumstances of the trademark subject to the cancellation proceeding.
No. The evidence submitted will be public. We therefore recommend that you do not include any personal or confidential information that is not crucial to the proceeding. If certain documents or useful information are nonetheless sensitive, they may be redacted to hide the confidential information before being filed as evidence.
We can provide advice on what documents should or should not be included in the evidence of use.
No. The notice in question is not to inform the owner that its mark has been cancelled, but rather to inform the owner that evidence of use is required. A trademark will only be cancelled if the owner fails to provide evidence of use in response to a notice issued by the Registrar (or if there is no reason justifying the absence of use). In the event that evidence of use is only demonstrated for part of the goods/services covered by the registration, the registration may be partially cancelled for those goods/services for which the owner was unable to provide evidence of use.
As a proactive way to deal with this new initiative from CIPO, it would be advisable to ensure that minimal trademark use is made in Canada. The burden of proof in such proceedings is low, and minimal sales in the ordinary course of trade in Canada will generally be considered sufficient evidence of use to maintain a registration in association with a given good/service.
That said, if a trademark has not been used at all in Canada for the past 3 years, it would be recommended to file a new application for this trademark. If applicable, certain strategies could even be considered to slow down the registration process for this new application as much as possible (for example, by including in the application a broad list of goods and services which will be the subject of an examination report).
Although a new application could be for the same mark in association with the same goods/services than those designated in the existing registration, we would nonetheless recommend taking the opportunity to file an application with an updated statement of goods/services. If necessary, we can provide you with recommendations in light of the current Canadian practice. Similarly, if a design mark has evolved over time, it will be advisable to file the current version of that mark.
There are certain distinctions to be made, whether the proceeding is initiated at the request of a third party or on the Registrar’s own initiative.
Unlike in the usual proceedings initiated by third parties-, in a Registrar-initiated proceeding, the Registrar will conduct a preliminary review of the evidence before the written representations stage. This means that, upon receipt of the evidence filed by the owner, the Registrar will examine the elements submitted and will form an opinion on the use of the trademark. If satisfied that use has been shown, the proceeding may be terminated (with the owner’s consent). If the Registrar is not satisfied that the evidence clearly demonstrates use of the mark in association with the goods and/or services covered by the registration, the owner will be given the opportunity to file written submissions. If the Registrar decides that use has been demonstrated for only a portion of the goods and/or services, the owner will have the option of either removing the goods and/or services for which evidence of use has not been shown, or moving forward with the next step.
Although the Registrar will not be able to file written submissions or participate in a hearing as a third party, the owner will still have this opportunity, just as in a regular proceeding. Finally, the Registrar’s decision may also be appealed to the Federal Court.
The objective of this pilot project is to provide CIPO with an overview of how many registered trademarks are no longer in use in Canada based on a given sample (i.e. the registrations which will have been selected in the first phase of this pilot project). The Registrar’s priority is to ensure that the Trademark Register accurately reflects trademarks that are in use, and in connection with the goods and services that are listed in the registration, for efficient use of resources, to promote fair competition and preserve the integrity of the trademark system.
Once a statistically significant number of cancellation proceedings will have been reached, CIPO will organize a second phase of consultations to gather opinions on:
- whether this pilot project should be continued, and if so, whether there are particular types of registrations that should be targeted;
- the need to target all or only some of the goods and services covered by the registration; and,
- the need for the Registrar to investigate a selected registration, and to initiate proceedings only if the investigation reveals no use of the trademark in Canada.
Section 45 of the Act provides that the Registrar may, on his own initiative, initiate a cancellation proceeding and require an owner to provide evidence of use of the selected trademark in Canada after 3 years from the date of registration.
Yes. CIPO has issued an official communication on this pilot project, available on their website.
