Section 45 Proceedings
Notice: This information is to be considered solely as a guide and should not be quoted as or considered to be a legal authority. It may become obsolete in whole or in part at any time without notice. Authority must be found in the Trade-marks Act, the Trade-marks Regulations, and in decisions of the courts interpreting them.
Section 45 Proceedings
Section 45 of the Trade-marks Act provides a means whereby a registration for a trade-mark may be expunged. In particular, a registration may be expunged under s. 45 if the mark has not been in use in Canada during the past three years and there are no special circumstances justifying the lack of use. (Expungement of a registration based on other issues such as ownership, distinctiveness and abandonment of a registered trade-mark is not dealt with under s. 45.)
The standard stages in a section 45 proceeding are as follows:
- Issuance of Section 45 Notice:
- anyone (the requesting party) may ask the Registrar of Trade-marks (the Registrar) to issue a notice under s. 45 – a notice will generally be issued provided the prescribed fee is paid and the registration has been on the Register for more than three years and has not been the subject of a s. 45 decision during the preceding three years.
- Evidence Stage:
- the owner of a trade-mark registration (the registrant) files evidence in the form of affidavits or statutory declarations.
- Argument Stage:
- the requesting party is given an opportunity to file written representations concerning the adequacy of the registrant's evidence;
- the registrant is given an opportunity to file written representations concerning the adequacy of its evidence;
- the registrant and the requesting party are each given an opportunity to make submissions at an oral hearing.
Once all of the stages are complete, the Registrar issues a written decision. This decision is appealable to the Federal Court.
