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. Authority must be found in the Trade-marks Act, the Trade-marks Regulations, and in decisions of the courts interpreting them.
Section 45 of the Trade-marks Act provides a means whereby a registration for a trademark 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 trademark 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 Trademarks (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 trademark 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.
Table of Contents
- Standing in a Section 45 proceeding
- Cost of a Section 45 proceeding
- Responding to a Section 45 Notice
- Form of evidence to file
- Requesting an extension of time
- Overall timeline for a Section 45 proceeding
- Appealing a Section 45 decision
- Obtaining copies of TMOB decisions
- Practice Notice on Section 45 Proceedings
- FAQ on Section 45 Proceedings—The Registered Owner
- FAQ on Section 45 Proceedings—The Requesting Party
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 commenced by sending a letter to the Registrar, asking that a notice be issued under s. 45 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 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 Trademark on the Register Less than Three Years 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 commence a section 45 proceeding, a prescribed filing fee. A fee is also payable for an extension of time request (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. Please note that 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 Notice entitled Fee Payment Practice of the Canadian Intellectual Property Office.
Responding to a Section 45 Notice
The owner of a trademark registration (or its representative for service) will receive a Section 45 Notice directly from the Registrar, indicating a three-month deadline for responding thereto.
If a registrant 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 registrant, or preferably its trademark agent, should take one of the following actions within the three-month time period, failing which its registration may be expunged:
- File one or more affidavits or statutory declarations and send a copy to the requesting party; or
- Request an extension of time for the filing of evidence and pay the prescribed fee; the request must:
Form of evidence to file
See Evidence in Practice in Section 45 Proceedings.
Note the following:
- Evidence must be filed in the form of affidavits or statutory declarations;
- Evidence cannot be filed by fax;
- Evidence is not subject to cross-examination.
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 a copy sent to the requesting party within the set deadline.
Requesting an extension of time
See Extensions of Time for Filing Evidence in Practice in Section 45 Proceedings.
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 Trade-marks Act).
Obtaining copies of TMOB decisions
To order a copy of any decision of the TMOB:
- Go to Trademark Document Order Form (you will need to provide the application number of the file as the document number, select <correspondence> as the document type and indicate in the <Additional Comments> box that you only want the final decision of the TMOB) or
- 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.
- Date modified: