Section 45 proceeding

In Canadian trademark law, a section 45 proceeding (also known as a summary expungement proceeding[1] or cancellation proceeding[2][3]) is an administrative process that allows any third party to request the removal of a trademark from the register, effectively cancelling the trademark registration.[4][5] Alternatively, the Canadian Intellectual Property Office (CIPO)—acting on behalf of the Registrar of Trademarks—can start the process on its own accord without the need for an external third party request.[1][4]

This article is about the cancellation of registered trademarks in Canada. For the sealing or destruction of criminal records, see Expungement.

When a trademark is registered, it must be used.[1] If a trademark is not being used in Canada and it has been registered for more than three years, the trademark can be expunged through this process.[1][4] These expungement proceedings are heard and decided by the Trademarks Opposition Board—an administrative body within CIPO.[1]

The Trademarks Act and Trademarks Regulations govern section 45 proceedings in Canada.[5][6][7] The Trademarks Act sets out the rules of evidence, service requirements, procedural protections, the jurisdiction/authority of the Registrar of Trademarks (delegated to and exercised by the Trademarks Opposition Board), and the statutory test that registered trademark owners are required to meet.[5][6] Meanwhile, the Trademarks Regulations provide further details on timeframes and requirements for payment of fees, correspondence, documents, service, evidence, written representations, statements, and hearings.[5][7]

Definition of use

When making decisions in section 45 proceedings, the Trademarks Opposition Board (on behalf of the Registrar of Trademarks) considers whether the trademark was in "use".[5]

The term "use" has a specific meaning in the context of the Trademarks Act.[8] If the trademark is registered in relation to goods, the registered trademark owner is required to demonstrate "use" by proving that the trademark appeared on the goods themselves, on the packaging that contained the goods, or the trademark and the goods were associated in some other way that customers would know that they were associated with each other.[8] The registered trademark owner is also required to show that this occurred in the ordinary course of business when the goods were given to the customer.[8] Specifically in relation to goods exported from Canada, if the trademark appeared on the goods themselves or on the packaging that contained the goods at the time that they were exported from Canada, then this would be sufficient to demonstrate "use" of the trademark in Canada.[8] Similarly, if the trademark is registered in relation to services, it is adequate for the registered trademark owner to simply prove that the trademark was visible when the service was provided or advertised.[8]

For both goods and services, registered trademark owners must additionally show that these activities occurred in Canada at some point in the past 3 years.[6] If a trademark was not used, the owner is required to provide a reason and when it was last used.[6] The absence of use must be because of special circumstances; otherwise, the registered trademark will be cancelled (expunged)—either completely or partially.[6]

Procedure

Section 45 proceedings typically involve notice, evidence and arguments.[1][4] All documents must be properly served in the manner and timeframes set out in the Trademarks Act and Trademarks Regulations.[4][5] Section 45 proceedings may span up to 4 years or more, although some may be finished in two years.[4]

Notice

Proceedings begin when a third party files a request to issue a section 45 notice to the registered trademark owner or CIPO (on behalf of the Registrar of Trademarks) starts the process on its own.[1][4][5] A section 45 notice can only be issued if the trademark has been registered for more than three years.[1][4]

Evidence

After receiving a section 45 notice, the registered trademark owner is required to submit evidence that shows use of the trademark in Canada for the three-year period before the date of the notice.[1][4][5] Alternatively, if the trademark was not used, the owner must demonstrate that the absence of use was because of special circumstances.[1][4][5] If the owner does not respond to the section 45 notice, their trademark registration may be cancelled unless a request is made and accepted for a time extension.[1][4][5]

Unlike opposition proceedings, there is no cross-examination of witnesses and only the registered trademark owner provides evidence.[4][5]

Arguments

Both the third party and the registered trademark owner can submit written arguments and/or request to provide oral arguments at a hearing.[1][4][5] The third party and owner can also file a statement that they will not be making any arguments.[5]

Decision and appeal

Once the proceeding is complete, the Trademarks Opposition Board (TMOB) makes a decision and provides written reasons.[1][4][5] The Board can either maintain or cancel (expunge) the trademark registration (in whole or in part).[1][5] Decisions of the TMOB can be appealed to the Federal Court of Canada.[1][4][5]

See also

References
  1. "Trademarks guide—Canadian Intellectual Property Office". Government of Canada. 2019-06-14.
  2. "Navigating the Changes to Opposition and Section 45 Proceedings—Canadian Intellectual Property Office". Government of Canada. 2019-06-19.
  3. "Opposition to Protocol applications and section 45 cancellation proceedings against Protocol registrations". Government of Canada. 2019-06-19.
  4. "Section 45 Proceedings—Canadian Intellectual Property Office". Government of Canada. 2020-06-30.
  5. "Practice in section 45 proceedings—Canadian Intellectual Property Office". Government of Canada. 2019-07-23.
  6. "Trademarks Act—Registrar may request evidence of use". Government of Canada. 2020-08-06.
  7. "Trademarks Regulations—Part 1: Rules of General Application (continued)—Proceeding Under Section 45 of Act". Government of Canada. 2020-08-06.
  8. "Trademarks Act—When deemed to be used". Government of Canada. 2020-08-06.
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