By Marie Lussier
In January 2025, the Registrar of Trademarks launched a pilot project in which it sends notices to certain registrants asking them to show use of their registered mark, failing which their registration is to be cancelled.
These notices are subject to the same modalities as those issued at the request of a third party, pursuant to S. 45 of the Trademarks Act. The registrant must file affidavit evidence showing the use of the registered mark in Canada, in the normal course of trade, with each of the goods/services covered by their registration, or establish exceptional circumstances to excuse their non-use.
In January, the Registrar issued 100 such notices. A further 50 will issue in each of February and March. No number has been set for the following months, and no data is available at this time on whether any registrations have been cancelled (or maintained) pursuant to these notices.
The Canadian Trademarks Office will continue to update their site during the first phase of the project and, once a “statistically significant” number of proceedings have concluded, the Office will launch phase 2 of the pilot project. In phase 2, they will assess whether the project should continue and, if so, whether the approach should be altered so as, for instance: a) target certain types of registrations, b) have the notice issue regarding all or some of the registered goods/services and c) have the Registrar investigate the alleged use prior to issuing the notice.
The stated goal of the project is to declutter the Register to make it easier for potential trademark users/applicants to adopt a brand and to register it in an efficient manner.
These goals are laudable.
That said, they should be considered against the backdrop of recent changes to Canadian trademark law that did away with the use requirement.
In fact, Canadian applicants previously had to either claim that they were using their mark at their application filing date (for applications based on “use in Canada”) or file a declaration of use before their registration could issue (for applications based on “intent to use”). Despite significant protest from the profession, the Trademarks Act was amended in 2019 to remove all use requirements from the application process.
Furthermore, Canada does not now have, and has never had, a system akin to that of the U.S. where registrants are required to file specimens of use to obtain and to maintain their registration.
Against that backdrop, this pilot project could be seen as a way to alleviate some of the strain introduced by the 2019 changes which opened the floodgates to the filing of applications. Time may tell what effect the project has, and at what cost, to help legitimate brand owners and businesses clear, adopt, register and defend trademarks in Canada.