In early 2025, the Canadian Intellectual Property Office (CIPO) launched a pilot project to monitor the actual use of nationally registered trademarks on its own initiative. The purpose of this initiative is to conduct random non-use proceedings under Section 45 of the Canadian Trademarks Act.
As part of this process, trademark owners whose trademarks have been registered for over three years may receive a request from CIPO to provide proof of use of their mark for the goods and services covered by the registration. If no evidence of use is available, the owner may present reasons for non-use due to exceptional circumstances. However, if the trademark owner cannot provide sufficient evidence of use or justification for non-use, the registration may be cancelled in whole or in part.
At this stage, the initiative is a pilot project, and CIPO will determine its continuation based on the initial results.
How can trademark owners in Canada prepare?
To protect their registered trademarks in Canada from potential cancellation, trademark owners should ensure that:
- Their registrations are up to date and cover essential goods and services relevant to their business.
- Their trademarks are actively used in commerce in Canada.
- Their trademark use is well-documented with reliable evidence.
It is crucial for trademark owners to use their marks consistently and systematically collect proof of use. This helps maintain legal protection for the trademark and ensures it can be defended in case of infringement. Failure to provide proof of use may lead to the loss of trademark rights, weakening the owner's market position.
If your company has a registered trademark in Canada, now is the right time to make sure that its use and documentation are in order. If the existing registrations do not cover all key goods and services, it may also be worth considering additional protection through new applications.
Proof of trademark use: why it matters and how to prepare
Proof of trademark use refers to evidence demonstrating the active commercial use of a registered trademark for the goods and services it covers. With such evidence, the owner of the trademark can objectively establish the extent, timing, and nature of the use, where needed. Therefore, the materials should clearly indicate the relevant market area, dates, and the trademark itself. If the documentation contains trade secrets, such as financial investments in advertising, requests for confidentiality can generally be made..
Common types of acceptable proof include:
- Advertising and marketing materials, such as social media posts, printed or online advertisements. Video content can also be used.
- Photos from retail locations, service points, product displays, products, product packaging, or other markings, such as laundry care labels, where the trademark is visible.
- Sales invoices, receipts, purchase orders, import/export documents, or other records demonstrating commercial transactions involving the trademark.
- Brochures and product catalogues showcasing the trademarked products or services.
Screen shots from websites or digital marketing, such as social media channels, should be accompanied by data on the geographic reach of the audience and visitor statistics. This can be verified, for example, through website or account statistics tools, which is why such data should also be collected on a regular basis. The same applies to data on newsletter recipient counts. If the advertisement appeared in a third-party publication, it is advisable to document the publication’s circulation details. Declarations signed by the trademark owner have only limited evidentiary weight in the overall assessment
It is important to note that proof of use requirements and the evaluation of evidence may vary across different jurisdictions, including the U.S., China, and the EU.
This blog post was co-authored by our experts Sirpa Tengström and Emilia Hodge. If you have any questions or would like to discuss this topic further, feel free to contact us.
