Section 45 of the Canadian Trademarks Act (the "Act") provides a means of summarily expunging (cancelling) trademarks from the Register that are no longer in use. The proceeding has been described as one for removing "dead wood" from the Register, and is often used as a vehicle to overcome citations raised in an Office Action on the basis of confusion, or as a counter-action in an opposition proceeding.
The commencement of the proceeding. With rare exceptions, section 45 proceedings may only be commenced against a trademark that has been on the Register for at least three years. The proceeding may be initiated by any person (the "requesting party") upon the filing of a written request and payment of the prescribed fee. Upon receipt of the written request and fee, the Registrar will issue a section 45 notice to the owner of the registration (the "registrant"), requiring the registrant to file evidence showing use of the trademark in Canada at any time during the three-year period immediately preceding the date of the section 45 notice, or to provide the reason(s) for the absence of use.
The evidence. A response to a section 45 notice is required by way of an affidavit within three months of the date of the notice. A single four-month extension of time is available to the registrant.
In order to maintain the registration in association with all of the wares and/or services for which the mark is registered, the affidavit must show use of the trademark in Canada, with respect to each of the wares and/or services specified in the registration, at any time during the three-year period immediately preceding the date of the section 45 notice.
Typically, the evidence will include an example of how the trademark appears in association with each of the wares and/or services listed in the registration, along with copies of invoices showing at least one sale in Canada, in the normal course of trade as it is described in the affidavit, during the three-year period. There is no need for evidentiary overkill; establishing a single sale in Canada in the normal course of trade during the three-year period is sufficient.
If there was no use during the three-year period, the registrant must file evidence indicating when the trademark was last used, establishing the reason(s) for the absence of use, and demonstrating a serious intention to resume use, including steps taken in that regard. With respect to the reason(s) for the absence of use, the registrant must establish "special circumstances," i.e., circumstances that are beyond the registrant's control and are the cause of the period of non-use. The state of the economy (economic hardship/recession) does not amount to "special circumstances." More is required, such as the recent acquisition of the trademark following the bankruptcy of the former owner.
If no evidence is filed, the registration will be expunged. If insufficient evidence is filed in respect of some of the wares and/or services, the registration will be amended to delete any wares and/or services for which there is insufficient evidence of use. A registration may therefore be partially maintained.
In keeping with the summary nature of section 45 proceedings, there is no opportunity for the requesting party to cross-examine the affiant on his or her affidavit filed in response to the section 45 notice. Moreover, no evidence may be filed by the requesting party.
Written submissions. Following receipt of the registrant's evidence, the Registrar will invite the requesting party to deliver written submissions. Once the requesting party has delivered written submissions or the deadline to do so passes, the registrar will in turn invite the registrant to deliver written submissions.
Both the requesting party and the registrant are provided with four months to deliver written submissions. An extension of time is not available at this stage of the proceedings.
Written submissions are not required. If neither party files written submissions, the Registar will, in due course, issue a decision based upon the evidence filed, unless one or both of the parties request to be heard at a hearing.
The oral hearing. As with written submissions, an oral hearing is not required. However, if a party does wish to be heard and participate at a hearing, that party may request an oral hearing by way of a written request. The request must be made within one month following the deadline for the delivery of the registrant's written submissions. Unlike in opposition proceedings, the Registrar will not issue a notice to the parties advising of a deadline by which to request an oral hearing.
Appeal. An appeal of the decision of the Registrar to expunge or maintain the registration, in whole in part, may be filed with the Federal Court of Canada. The appeal must be filed within two months of the date of the decision. The registrant may file additional evidence. While the requesting party is still not entitled to file evidence, it may, however, cross-examine on the registrant's additional evidence.
Geneviève M. Prévost, Toronto
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