Section 45 Proceedings

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. Users of this information should also consult the Trademarks Act, the Trademarks Regulations and the decisions of the courts interpreting them. In the event of any discrepancy between the legislation and the information contained herein, the legislation will apply.

Section 45 of the Trademarks Act allows anyone to request that a trademark registration be removed (expunged) from the Register of Trademarks if the owner is unable to show use of the trademark in Canada during the three-year period preceding the date of the section 45 notice, 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 trademark is not dealt with under s. 45.)

The standard stages in a section 45 proceeding are as follows:

  1. Issuance of section 45 notice:
    1. Any person (the requesting party) may file a written request asking the Registrar of Trademarks (the Registrar) to forward a s.45 notice to the registered owner of a trademark that has been registered for a period of three or more years. The requesting party may request that the Registrar limit the s.45 notice to particular goods or services set out in the registration. A notice will generally be issued provided the prescribed fee is paid and the registration has been on the Register for three or more years and has not been the subject of a s. 45 decision during the preceding three years.

      or

    2. The Registrar may, on his or her own initiative, initiate a section 45 proceeding against any registration that has been registered for a period of three or more years. The Registrar may limit the s.45 notice to particular goods or services set out in the registration.
  2. Evidence Stage:
    1. the owner of a trademark registration (the registered owner) files and serves evidence in the form of affidavits or statutory declarations.
  3. Argument Stage:
    1. the requesting party is given an opportunity to file written representations (alternatively, it files and serves a statement that it does not wish to file written representations);
    2. the registered owner is given an opportunity to file written representations (alternatively, it files and serves a statement that it does not wish to file written representations);
    3. the registered owner and the requesting party are each given an opportunity to make representations 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.

On this page

Standing in a section 45 proceeding

Any person is entitled to request that a notice be issued under s. 45.

It is highly recommended that a requesting party hire a registered trademark agent to represent it. Choose someone with proven expertise in this field. A list of trademark agents is available online, and by contacting the Client Service Centre.

Starting a section 45 proceeding

A section 45 proceeding is started by sending a written request to the Registrar, asking that a s.45 notice be forwarded to the owner of a specific trademark registration (the number of the registration must be provided), together with the prescribed fee. (See fees and the Practice Notice concerning payment of fees entitled Fee Payment Practice of the Canadian Intellectual Property Office).

A section 45 proceeding typically cannot be commenced until after the trademark registration has been on the Register for three years. (See No authority to issue the notice in Practice in section 45 Proceedings)

In addition, the Registrar may decline to issue a section 45 Notice in certain circumstances. (See Good reasons not to issue the notice in Practice in section 45 Proceedings)

Cost of a section 45 proceeding

In order to start a section 45 proceeding, a prescribed fee must be paid. Fees are also payable to obtain extensions of time (fees). Those are the only amounts payable to the Registrar. However, a party defending a section 45 proceeding will spend time and money preparing evidence in the form of affidavits or statutory declarations and both parties may spend time and money preparing written representations or participating in an oral hearing. Overall, s.45 proceedings are lengthy and not inexpensive. Moreover, there is no ability for the winning party to have any of its costs paid by the other side.

Payment of prescribed fees

Please contact the Client Service Centre for currently acceptable means of payment.

Please also see fees and the Practice Notices concerning payment of fees: Fee Payment Practice of the Canadian Intellectual Property Office and Fee Payment: General Authorization to Charge a Deficiency.

Responding to a section 45 notice

The owner of a trademark registration (or its trademarks agent) will receive a section 45 notice directly from the Registrar, indicating a three-month deadline for responding thereto.

If a registered owner does not already have a trademark agent, it is strongly recommended to hire one at this point. Section 45 proceedings may be complex and can cost considerable time and money. A trademark agent should be chosen carefully. Choose someone with proven expertise in this field. A list of trademark agents is available online or by contacting the Client Service Centre.

A registered owner (or their trademark agent) should take one of the following actions within the three-month time period, failing which their registration may be expunged:

  1. File one or more affidavits or statutory declarations and serve a copy to the requesting party; or
  2. Request an extension of time for the filing of evidence. This can be done by sending a letter to the Canadian Intellectual Property Office clearly marked "Attention Opposition Board" or by using the Trademarks Opposition Board's e-Services.

To request an extension of time for the filing of evidence, the registered owner must:

  1. identify the trademark, along with its registration number;
  2. provide sufficient reasons to explain why the extension of time is required;
  3. indicate the method by which the prescribed fee is being paid (see How to Make a Payment)
  4. cc. the requesting party's agent (or the requesting party if they do not have an agent).

Form of evidence to file

The registered owner needs to file evidence that demonstrates the use of the registered trademark in Canada at any time during the three-year period immediately preceding the date of the section 45 notice with respect to each of the goods and/or services specified in the registration, unless the trademark was not used in that period.

See section IV on Evidence in Practice in section 45 proceedings and FAQ on section 45 Proceedings – The Registered Owner for further details.

The registered owner should note the following:

The exact nature of the evidence to be filed depends on the individual case. A registered trademark agent can assist you in determining what evidence is needed in order to put your best case forward.

The evidence must be filed with the TMOB and served on the requesting party within the set deadline.

Overall timeline for a section 45 proceeding

A section 45 proceeding before the Registrar can take as long as two to four years or even longer.

Appealing a section 45 decision

An appeal from the final decision of the Registrar in a section 45 proceeding may be made to the Federal Court (see s.56 of the Trademarks Act).

Obtaining copies of TMOB decisions

To order a copy of any decision of the TMOB:

  1. Go to the Photocopies and Certified Copies of Decisions page or
  2. Call 1-866-997-1936 and ask for Data and Document Dissemination (in order to obtain a specific decision, you will need to provide the corresponding application number).

Status of active trademarks section 45 files

Information on trademarks section 45 cases is accessible on the Canadian Trademarks Database.

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