What is the TMOB Pilot Project?

In January 2025, the TMOB launched a pilot project involving the proactive initiation of Section 45 (of the Trademarks Act (R.S.C., 1985, c. T-13) non-use cancellation proceedings against Canadian trademark registrations.

While the Registrar of Trademarks (the “Registrar”) has long had the authority to initiate Section 45 proceedings, the Registrar had generally elected not to do so until now.

Under this initiative, selected trademark owners who receive a Section 45 notice will have to prove that their trademark has been in use in Canada within the last three years—or risk losing their registration.

Why is this important for trademark owners?

The stated reason for the pilot project is to help provide insight into how many registered trademarks are no longer in use, as it is a priority of the Registrar to ensure that that the Register of Trademarks (the “Register”) accurately reflects trademarks that are in use in association with the goods and services listed in the registration. This is a priority for the following reasons:

  1. Efficiency: A Register cluttered with trademarks that are no longer in use is less efficient for businesses seeking to register new trademarks as objections may be raised during examination based on trademarks which are not in use.
  2. Fair competition: A cluttered Register is a problem for businesses trying to create new brands as trademarks that are registered but not in use may be identified as obstacles during the trademark clearance process and prevent the adoption of trademarks that could be used and registered.
  3. Maintaining the integrity of the trademark system: The Register should accurately reflect trademarks in use and the accurate scope of goods and services used in association with those trademarks.

How the pilot project works:  The Registrar began issuing section 45 notices in January 2025 to randomly selected trademark registrants whose registrations have been on the Trademarks Register for more than three years and this will continue until at least April 2025. One hundred Section 45 notices were issued in January and there will be fifty more issued in each of February and March, as well as an undetermined number in April. The section 45 notices require the registrant to submit evidence of use of the trademarks in issue or establish that the lack of use was due to exceptional circumstances that justify the non-use.

Once a statistically significant number of proceedings have concluded, the TMOB will organize consultations to gather stakeholder feedback on:

  1. whether the pilot project should continue; and if so,
  2. whether there are particular types of registrations which should be targeted;
  3. whether section 45 notices should be issued against all or only some of the registered goods and services; and            ,
  4. whether the Registrar should perform an investigation against a selected registration and only issue a section 45 notice if the investigation does not show any use of the trademark in Canada.

What trademark owners should do now?

To avoid the risk of trademark cancellation, businesses should take the following steps:

  • Update your contact details with the Canadian Intellectual Property Office (“CIPO”). Make sure the owner address and trademark agent information are up to date to ensure you receive any Section 45 notices in a timely manner.
  • Act quickly if you receive a Section 45 notice. You will need to prepare and submit evidence—or risk losing your trademark rights.
  • Consult a trademark lawyer. A legal expert can help you navigate the process and improve your chances of maintaining your registration.

What happens next?

On January 20, 2025, the TMOB issued a Practice Notice titled “Pilot project on the Registrar-initiated section 45 expungement proceeding” which describes the project and includes information on the selection of the registrations for the pilot project, the procedure for discontinuance and provides information on the procedure that will be followed through to decision (for those proceedings which are not discontinued).

Tools have been developed and are available through links in the Practice Notice to assist trademark owners who receive a section 45 notice, including a guide to preparing an affidavit as well as a sample affidavit for section 45 proceedings.

The section 45 proceeding has also been modified to ensure an efficient and cost-effective process.

These modifications include:

  1. trademark owners must correlate evidence with each of the goods and services listed in the registration to facilitate efficient processing by the Registrar;
  2. the Registrar may offer to discontinue the section 45 proceeding on the basis of the owner’s consent if the evidence filed clearly indicates that the trademark remains in use; and
  3. hearings may be scheduled at a mutually convenient time at the trademark owner’s election.

Stay ahead of Trademark risks—Act now

Ensure your trademark registrations remain protected—keep your CIPO contact details up to date to receive any Section 45 notices on time. This will avoid inadvertent failure to respond to Section 45 notices and potential expungement of registrations. If you need assistance navigating the requirements, contact Miller Thomson’s Trademark Team for guidance.