Commencing January 2025, the Canadian Registrar of Trade Marks will issue between 50 and 100 Section 45 notices each month to randomly selected owners of trade mark registrations.
Section 45 of the Canadian Trade Marks Act empowers the Registrar of Trade Marks to challenge the validity of a trade mark registration based on non-use. A Section 45 notice is issued to the owner of a registered trade mark, requiring them to provide evidence that the mark has been used in Canada during the three years preceding the notice.
If the owner cannot demonstrate use or justify non-use under special circumstances, the trade mark (or some of its listed goods and services) may be removed from the Register. This process, known as an expungement proceeding, ensures that the Register reflects only active marks, fostering fairness and reducing obstacles for businesses seeking new registrations.
While Section 45 proceedings are often initiated by third parties, the Registrar’s new pilot project introduces a proactive approach, with the Registrar randomly issuing notices to ensure the Register remains uncluttered and efficient.
While this initiative is significant, it is not entirely new. Similar strategies have been employed elsewhere, such as the United States Patent and Trademark Office’s (USPTO) Post Registration Audit Program, which began in 2017. The USPTO program targets randomly selected registrations to confirm that the goods and services listed are genuinely in use. These audits have proven effective in reducing “deadwood” trade marks that create barriers for new filings and unnecessarily clutter the Register.
How the pilot works
Phase 1: Randomised selection and streamlined processes
The first phase of Canada’s pilot program targets trade marks registered for over three years, covering categories such as marks based on use, proposed use, or registration abroad. To streamline the process, the Registrar has introduced practical tools like guides and affidavit templates, required registrants to clearly correlate evidence with specific goods or services, and offered flexible options such as simplified discontinuations for straightforward cases and customisable hearing schedules. These measures aim to enhance efficiency and gather data on compliance and procedural effectiveness, ensuring the Register better reflects active and accurate use.
Phase 2: Feedback and future strategies
After a “statistically significant number” of proceedings have concluded, the Registrar will conduct consultations to assess the pilot program’s effectiveness. Feedback will focus on refining the process, such as prioritising registrations with broad descriptions or lengthy inactivity, implementing partial expungement for specific goods or services, and conducting pre-issuance investigations to minimise unnecessary proceedings. Insights from Phase 1 will shape these discussions, potentially leading to a permanent program or targeted improvements to better align with the needs of the trade mark system.
Familiar territory, new context
Although Canada is borrowing from global playbooks, its approach includes unique elements. Unlike the USPTO’s targeted audits, Canada’s initiative is strictly random, ensuring a broad and unbiased assessment of the Register. By publishing detailed data throughout the pilot, Canada also aims to foster transparency and gather insights for potential refinements.
This pilot program could signal a broader shift toward Registrar-led oversight of trade mark use. Consultations following the pilot’s initial phase will explore potential adjustments, such as targeting specific types of registrations or conducting preliminary investigations before issuing notices.
While Canada’s proactive stance is not groundbreaking, it is a timely and necessary measure to keep its trade mark system efficient and competitive. By addressing the issue of inactive trade marks head-on, the Registrar is sending a clear message: the Register is a space for active, valuable marks—not placeholders.