In Canada, registering a trademark is only the first step; you must actively use it in the market. If you fail to use your trademark in the “normal course of trade” for three consecutive years, anyone can petition the Canadian Intellectual Property Office (CIPO) to cancel (expunge) your registration through a Section 45 proceeding. Defending this process typically requires a Canadian trademark lawyer and can cost between $3,000 and $7,000 CAD.
Building a recognizable brand is one of the most valuable investments a business can make. However, many Canadian entrepreneurs mistakenly believe that once they receive their trademark registration certificate, their brand is protected forever, regardless of what they do next. 📍 Under Canadian intellectual property law, the system is strictly “use it or lose it.” You cannot simply hoard trademarks with the intention of using them someday or selling them to a competitor.
To maintain your legal rights, you must continually demonstrate that you are using the mark in Canada. If a competitor notices that your brand has been dormant, they can initiate legal proceedings to wipe your trademark from the registry, paving the way for them to use the name themselves. This guide will walk you through the essential trademark use requirements in Canada and how to protect your valuable intellectual property from expungement.
Step-by-Step Process in Canada
Whether your business operates out of a storefront in Toronto, a warehouse in Calgary, or an office in Vancouver, the federal Trademarks Act applies equally across all of Canada. To safeguard your brand, generally, you should follow these crucial steps to establish and maintain proper trademark “use.”
Step 1: Understand What Constitutes “Use” for Goods
If your trademark covers physical goods (like clothing, food products, or electronics), simply advertising the name is not enough. Under Canadian law, a trademark is deemed to be in use for goods only if the mark is visibly displayed on the product itself, or on its packaging, at the exact moment the ownership of the goods is transferred to the buyer.
This means that if you are selling a branded t-shirt, the logo must be on the tag or the packaging when the customer buys it. Pre-launch advertising campaigns or merely having a website that says “coming soon” does not qualify as use in the normal course of trade in Canada.
Step 2: Understand What Constitutes “Use” for Services
Proving use for services (like a restaurant, consulting firm, or delivery business) is slightly more flexible than for physical goods. For services, the trademark is considered to be in use if it is actively displayed or advertised while the services are being performed or offered in Canada.
For example, if you run a plumbing business in Ottawa, having your trademarked logo on your service vans, on the uniform of your employees, or prominently displayed on the invoice handed to the customer all legally constitute use. The key is that the service must actually be available for Canadians to purchase.
Step 3: Monitor the Critical Three-Year Anniversary
The Canadian Intellectual Property Office (CIPO) gives brand owners a grace period. For the first three years after your trademark is officially registered, your mark is generally safe from non-use cancellation challenges.
However, the moment your registration hits its third anniversary, it becomes vulnerable. From that day forward, any third party (often a competitor or someone who wants to register a similar name) can file a request with CIPO to issue a “Section 45 Notice” against you, forcing you to prove that you have been using the mark.
Step 4: Maintain Meticulous Evidence of Use
To survive a Section 45 proceeding, you cannot just write a letter to CIPO saying, “Yes, I am using it.” You must provide hard, undeniable evidence in the form of a sworn affidavit.
You must establish a habit of keeping pristine records. Save copies of dated Canadian invoices showing the trademark, photographs of product packaging, screenshots of your e-commerce website showing the mark alongside prices for Canadian buyers, and marketing materials. Ensure this evidence clearly shows sales occurring within the last three years.
Step 5: Defend Your Brand with a Local Lawyer
If you receive a Section 45 Notice, the clock starts ticking immediately. You generally have three months to submit your sworn affidavit and evidence to the Trademarks Opposition Board.
Because the legal definition of “use” is heavily scrutinized by Canadian courts, you should strongly consider browsing our directory to hire a local trademark lawyer. A professional can help you compile the precise type of evidence CIPO demands and draft the necessary legal arguments to save your registration.
How Much Does it Cost in Canada?
Managing trademark use and defending against expungement proceedings involves various administrative and legal fees. If a competitor attacks your registration, you must be prepared to invest in its defence.
- Initial Registration: Filing a trademark application with CIPO currently costs a base fee of $491.06 CAD for the first class of goods/services.
- Filing a Section 45 Request: If you want to cancel a competitor’s dormant trademark, CIPO charges a fee of $595.06 CAD.
- Lawyer Fees (Defence): Hiring a Canadian law firm to draft an affidavit and defend your mark in a Section 45 proceeding typically ranges from $3,000 to $7,000 CAD, depending on the complexity of your evidence.
| Type of Intellectual Property | Requirement to Maintain Rights | Vulnerability Period |
|---|---|---|
| Trademark (Goods) | Mark must be on goods/packaging at time of sale | 3 years post-registration |
| Trademark (Services) | Mark displayed during performance/advertising | 3 years post-registration |
| Unregistered Mark (Common Law) | Continuous local reputation and goodwill | Immediate upon abandonment |
How Long Does the Process Take?
Trademarks in Canada are registered for a period of 10 years and can be renewed indefinitely, provided you continue to use them. If a Section 45 proceeding is launched against you, you will be given 3 months to submit your evidence. Once all evidence and written arguments are filed by both parties, it can take CIPO an additional 12 to 18 months to issue a final written decision on whether your trademark will be expunged or maintained.
Frequently Asked Questions (FAQ)
Can I register a trademark in Canada if I haven’t started using it yet?
Yes. Canada updated its Trademarks Act to allow applicants to file and register a trademark without submitting a formal “Declaration of Use.” However, the “use it or lose it” rule still applies; you must commence use within three years of registration, or your mark becomes vulnerable to cancellation.
What happens if I only use my trademark on some of my registered goods?
In a Section 45 proceeding, you must prove use for each specific item listed in your registration. If your trademark covers “t-shirts and coffee mugs,” but your evidence only shows sales of t-shirts, CIPO will amend your registration to delete “coffee mugs,” partially reducing your protection.
Does giving away free promotional items count as trademark use?
Generally, no. Canadian courts have ruled that giving away free promotional swag (like pens or hats with your logo) does not usually constitute use in the “normal course of trade” unless you are actually in the business of manufacturing or selling those specific promotional items.
What if special circumstances prevented me from using my trademark?
Under Canadian law, non-use can be excused if it was caused by “special circumstances” outside of your control, such as a government regulatory delay (e.g., waiting for Health Canada approval) or a catastrophic factory fire. A temporary lack of funds or simple changes in business strategy are not accepted as valid excuses.
Can I stop someone else from using a dormant trademark?
If you discover a registered trademark that is blocking your own application, and it has been registered for more than three years, you or your trademark lawyer can request a Section 45 proceeding to have it expunged. CIPO will force the owner to prove they are still operating.
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