Since January 2025, the Canadian Intellectual Property Office (CIPO) has launched a pilot project for the ex officio cancellation of trademark rights, based on Section 45 of the Canadian Trademark Act (Section 45 of the Trademark Act). This mechanism allows the office to randomly select trademark registrations for cancellation proceedings if proof of use in Canada for the claimed goods and services is not provided, or if the lack of use is not justified.
A pilot project with significant implications
Although this initiative might appear to run counter to the principle of legal certainty, CIPO justifies it as a measure to assess the state of the country’s Trademark Registry, promote fairer competition, and ensure that registered rights reflect market realities.
This procedure applies to all trademarks registered in Canada that have been registered for at least three years. The selection is made at random in monthly batches of 45 registrations. Once notified, the owners or their legal representatives have three months to submit evidence of use of the trademark in Canada or, failing that, to justify its nonuse.
A Change in Canadian Trademark Policy?
Since the 2019 reform, use is no longer a prerequisite for obtaining trademark registration in Canada. However, with this new random cancellation procedure, CIPO may be reconsidering this position and evaluating the possibility of reintroducing the requirement to provide proof of use as a condition for maintaining trademark rights.
If so, this measure could signal a shift in approach in Canadian trademark policy, suggesting a possible return to the requirement to prove use in order to maintain registration, as was the case under the previous legislation.
Prevention and Compliance: Key to Avoiding Risks
Given this new reality, trademark owners in Canada must ensure that their rights are being used effectively or, failing that, that they can justify their lack of use in accordance with legal exceptions. Otherwise, they run the risk of being selected in this random process and losing their trademark.
This pilot project marks a turning point in trademark rights management in Canada, and its progress will need to be monitored to determine its impact on legal certainty and the country’s trademark protection strategy.
Cristina Arroyo, Associate Partner in the Trademark Practice Group at Elzaburu