CIPO Issues Amended Practice Notice On Evidence Requirements

The Canadian Intellectual Property Office ("CIPO") has recently amended its Practice Notice on Form of Evidence in Examination (the "Practice Notice"), clarifying how evidence submitted to establish acquired distinctiveness under subsection 32(1) of the Trademarks Act¹ (the "Act") should be presented.

Subsection 32(1) of the Trademarks Act

In an application to register a trademark, an applicant may at times be required to submit evidence to CIPO demonstrating that the applied for trademark is distinctive at the filing date for the application, pursuant to subsection 32(1) of the Act. Such instances include when the examiner objects to the application on the basis that the trademark is not inherently distinctive, or when the trademark consists exclusively or primarily of a non-traditional trademark (e.g. a sound, a scent, a texture). Common forms of evidence under subsection 32(1) may include evidence of the applicant attesting to having extensively used the applied-for trademark.

Amendments to the Practice Notice

Prior to these amendments, the Practice Notice stated that evidence submitted under subsection 32(1) must be submitted by way of affidavit or statutory declaration. The amendments made on January 27, 2026, clarify that the Office of the Registrar of Trademarks (the "Registrar") will not refuse to consider evidence submitted in other forms, though such evidence may receive reduced weight depending on its credibility and probative value.

Key Implications of the Amendments to the Practice Notice

While the Registrar has taken a flexible approach by not outright rejecting unsworn evidence, the Practice Notice makes clear that formal affidavits and statutory declarations carry significantly more weight in establishing acquired distinctiveness. Evidence submitted without proper formalization risks being accorded partial weight or potentially no weight at all, which could result in the refusal of a trademark application.

Moreover, the Practice Notice has important implications beyond the examination stage:

1. Opposition Proceedings: The Trademarks Opposition Board has historically required evidence by affidavit or statutory declaration. The Practice Notice reinforces the importance of properly sworn evidence and suggests a consistent evidentiary standard across all stages of trademark prosecution and dispute resolution.
2. Federal Court: Should a trademark matter proceed to judicial review or appeal, the Federal Court applies strict rules of evidence. Building a strong evidentiary foundation from the examination stage—through properly sworn affidavits and statutory declarations—creates a more robust record that can withstand scrutiny at higher levels of review.
3. Strategic Considerations: Applicants claiming acquired distinctiveness (i.e. that the applied-for trademark is distinctive at the date of filing due to prior extensive use) should proactively gather and formalize their evidence early in the application process. Delaying this step or submitting informal evidence may create unnecessary risks and complications.

Professional Representation Remains Key

Navigating the Canadian trademark registration process requires careful attention to procedural requirements, evidentiary standards, and strategic timing.

Registered trademark agents possess the specialized knowledge and experience necessary to:

• Assess whether a trademark requires evidence of acquired distinctiveness;
• Gather and organize appropriate evidence that meets the Registrar's requirements;
• Prepare affidavits and statutory declarations that maximize probative value;
• Anticipate potential objections and address them proactively; and
• Ensure compliance with evolving practice notices and regulatory changes.

Working with a registered trademark agent helps protect your valuable brand assets by ensuring that your trademark applications are prosecuted correctly, efficiently, and with the highest probability of success—from initial filing through registration and beyond.

If you have questions about how this practice notice affects your pending or future trademark applications, or if you require assistance with evidence preparation, McMillan LLP's Intellectual Property practice group is available to provide assistance.

Footnote

1 Trademarks Act, RSC 1985, c T-13.

The foregoing provides only an overview and does not constitute legal advice. Readers are cautioned against making any decisions based on this material alone. Rather, specific legal advice should be obtained.

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