Canadian Trademark Office to send notices to random trademark owners to prove use of their marks

The Canadian Intellectual Property Office issued a practice notice on January 20, 2025, announcing that the Registrar of Trademarks will start to randomly send summary cancellation notices to Canadian registered trademark owners.

While this may sound worrisome, only about 100 notices will be issued in January 2025 with the goal of gathering data and then conducting a public consultation based on the findings. 50 notices will be issued in February and March with the possibility of additional notices issued in April.

A summary cancellation action is a mechanism, often called a “deadwood” measure, which compels a trademark owner to file evidence of use of their registered trademark anytime within the preceding three years, failing to do so results in the trademark being cancelled. The purpose is to clear the Register of trademarks that are no longer in use, rendering them available again for registration.

Normally, a summary cancellation action is issued by a third party who intends to apply for a trademark that it suspects is no longer being used, or it can be a retaliatory act against an opponent.

The practice notice also states that its goal is to estimate the proportion of registered trademarks that are no longer in use. This is likely done by projecting the findings onto the totality of the Register; and if they lead to the belief that the Canadian trademarks Register is “cluttered” with many unused registered trademarks, the practice could continue to clear the register of unused trademarks as they form unnecessary obstacles to applicants who could use the trademarks.

The practice notice also states as a guiding principle that Register should reflect the trademarks used in the marketplace. While there is no specific mandate for this, the Federal Government is tasked with building a fair, efficient and competitive marketplace.

Specimens of use and declarations have not been required to achieve registration in Canada for some time now, so this may be seen as a compensating force to eliminate registrations that are not, or were never, used in Canada.

Of course, many of us wonder if this is going to be helpful and if it may result in an unwarranted burden to brand owners.

While CIPO has been kind enough to provide a sample affidavit within the practice notice, surviving a summary cancellation action is not always straightforward as there are pitfalls, and each case can be quite unique.

Out of the current 741,949 registered trademarks in Canada (according to a search conducted on January 29, 2025), the projected 200 notices as part of this pilot project amount to a small percentage of the overall Register.

Still, Canadian registered trademark owners need not be alarmed at this point; however, if this were to become a common and recurring practice, trademark owners in Canada will have to be vigilant with using all their brands in a way that will assist with maintaining their rights.

Should you have received one of these notices or wish to have our assistance auditing your trademark portfolio for any vulnerabilities, please contact our IP team.