Requires Brand Owners in Canada to Ponder Over New Regulations
The Canadian Intellectual Property Office (CIPO) has initiated a new non-use scheme for trade mark registrations, aiming to ensure the accuracy of the trade mark register, promote efficient resource utilization, and maintain fair competition. This scheme, known as the unilateral cancellation notice pilot, targets potential non-use of trade mark registrations older than three years.
Under this pilot project, the Registrar can initiate cancellation proceedings to remove potentially unused trademarks from the register, a move designed to clear the register of 'deadwood' marks and improve trademark clarity and availability. Relevant practice notices, FAQs, and roadmaps about the expungement procedure and this pilot are publicly available on the CIPO website, providing guidance for trademark owners and interested parties.
Trademark owners must maintain and provide evidence of active use of their marks in Canada to avoid cancellation during this pilot. Failure to do so could result in the loss of a trade mark registration. The unilateral nature of the cancellation notice means the Registrar does not require a third party to initiate a cancellation action; the office can act on its own to expunge marks deemed unused after three years.
Owners of registrations older than three years are at heightened risk if they have not used the trademarks in Canada, as their registrations may be struck off without prior infringement or opposition. This approach encourages trademark owners to be diligent about use and record-keeping, ensuring timely filings of evidence in response to cancellation notices or risk losing their rights.
Following cancellation, owners may have to re-register the trademark if still desired, but only after formal cancellation decisions are issued and published by the office. Costs awards can be up to 10 times the official fees if requested and if there is unreasonable behavior, undue delays or expenses, late cancellation of the hearing, divisional applications forcing multiple oppositions, or bad faith.
It is important to note that failure to submit evidence of use or justifications for non-use does not necessarily mean the registration will be cancelled for trade mark registrations less than three years old. The aim is to prevent the enforcement of newly-registered trade marks not in use.
The Canadian Office issues monthly batches of cancellation notices to randomly selected registrations as part of the new non-use scheme. In opposition proceedings, the Registrar can issue a costs award against a party. This is aimed at eliminating infringement proceedings filed in bad faith.
In conclusion, the new non-use scheme reflects a stricter enforcement stance by CIPO on non-use of trademarks older than three years, designed to improve the trademark register's accuracy and availability. It imposes a significant onus on owners to demonstrate active use or face unilateral cancellation. This emphasizes the importance for trademark proprietors in Canada to actively use their marks and maintain documentary proof of use to safeguard their registrations. The phrase "use it, or lose it" is more important than ever in Canada due to the new non-use scheme for trade mark registrations.
- In light of the new non-use scheme, it's crucial for trademark owners to maintain active use of their marks in Canada, as failure to do so may lead to the loss of their trade mark registrations, even without prior infringement or opposition.
- The Canadian Intellectual Property Office (CIPO)'s enforcement of the new non-use scheme affects not only the trade mark industry, but also the media, finance, and business sectors, as the unilateral cancellation of unused trademarks could potentially impact their operations and competitiveness.
