The Canadian Intellectual Property Office (CIPO) has launched a new pilot project to clean up the Canadian register of trade marks by removing inactive trade marks.
Beginning January 2025, the Canadian Registrar will proactively issue cancellation proceedings against randomly selected registrations, requiring the owners of marks that have been on the register for over three years, to submit evidence of trade mark use or, where applicable, justification for non-use based on special circumstances. If the registered owner does not provide any evidence in response to the notice, and cannot demonstrate special circumstances, the trade mark will be cancelled. If use can only be demonstrated for some of the goods/services, the registration will be limited accordingly.
The aim is to obtain information on how much “deadwood” there is on the register and to clean up the register from inactive trade marks. The stated aim of the project is to ensure efficient use and integrity of the register as well as fair competition. It is noteworthy that in Canada, objections to new applications may be raised by the CIPO based on earlier registered trade marks including trade marks which are not in use.
Only a short time period will be given to prove evidence of use. As such owners of Canadian trade marks should ensure that they are in a position to file the evidence, if requested. If your registered marks are not in use in Canada, it is advisable to seek legal advice for maintaining protection. If you have any questions related to your trade mark or the pilot project, please do not hesitate to contact your usual attorney at Forresters.
