Skip to content
Harrison Pensa LLP
Person using a laptop to view a government website detailing "Section 45 Proceedings.

16 January, 2025

Project requires trademark owners to prove use

The Canadian trademarks office is starting a pilot project that will require randomly selected trademark registrants to prove they actually use their trademarks. If the registrant can’t prove use of the trademark in conjunction with the goods and services listed on the registration, the Canadian Intellectual Property Office (CIPO) will expunge the trademark registration in whole or in part.

Frankly, it will be a nuisance for registrants to take the time, effort, and money to respond to such a notice. But if a recipient of a notice doesn’t respond with appropriate proof within the time period, their registration will be expunged.

This process — commonly referred to as a Section 45 proceeding — allows CIPO to send a notice to trademark registrants demanding proof of use. If a registrant can’t show use of a mark in Canada during the previous three years, CIPO will expunge the registration. If use for some of the goods and services listed can’t be proved, CIPO will remove those uses from the registration.

“Use” for trademark purposes can get rather technical. What is and is not included as a use can be surprising. Our Trademarks Guide delves into the subject of use and other trademark issues.

Use of similar trademarks

Typically CIPO does not initiate Section 45 proceedings on its own. They are usually initiated by applicants of marks that are similar to existing registered marks, usually after CIPO examiners have raised a registered trademark as a bar to the applicant’s registration because it is confusingly similar. Before initiating the Section 45 process, the applicant will typically try to find online evidence of use by the registrant and would not bother to initiate the process where there is obvious use. If the recipient doesn’t or can’t prove use and it gets expunged, the applicant’s application will proceed.

But CIPO’s notices will be chosen at random.

This shows how important it is for trademark registrants to keep evidence of their ongoing use of their trademarks in connection with the listed goods and services. That includes photos of the mark on the goods or packaging and photos of the mark on store displays. For services, evidence would include things like web images, ads, menus, and service trucks. Other details include how and where the goods and services are sold, sample invoices showing sales and shipment, and sales summaries. 

If the registrant allows others to use their marks under license, details must be provided, as use by others without appropriate documentation and control is not considered use by the registrant.

Those filing evidence should keep in mind that this evidence becomes part of their trademark registration file that anyone can see. So competitors will be able to see it.

The bottom line is that any trademark registrant who gets a Section 45 notice needs to deal with it in an effective and timely manner. Contact your lawyer or trademark agent right away.

David Canton is a business lawyer and trademark agent at Harrison Pensa with a practice focusing on technology, privacy law, technology companies and intellectual property. Connect with David on LinkedIn and Twitter.

Image credit: ©Rymden – stock.adobe.com

A headshot of David Canton.
About the author

David Canton

Consultant
  • Business Law & Financial Services,
  • Data Protection,
  • e-Commerce,
  • Information Technology,
  • Intellectual Property,
  • SaaS,
  • Software Licenses,
  • Technology and Privacy Law
Meet David

Get connected

Sign up for our newsletter to stay up to date with current events, news and articles

Newsletter Sign-Up (Posts)

CASL
This field is for validation purposes and should be left unchanged.
Loading...