Draft – Pilot project on Registrar-initiated section 45 proceedings

Publication Date: 201X-XX-XX

Pursuant to the authority under section 45 of the Act, the Registrar of Trademarks (the Registrar) is commencing a pilot project whereby on the Registrar's own initiative Section 45 Notices against trademark registrations will be issued. The Registrar considers that issuing Section 45 Notices on the Registrar's own initiative will assist with the clearing of deadwood from the Register. The Registrar aims to implement an expedient and cost effective process for these proceedings.

Under this pilot project, the Registrar will conduct a preliminary review of the evidence and discontinue the proceedings if the Registrar is satisfied that use of the trademark has been clearly shown with the registered goods and services during the relevant period. The Registrar considers that for registrations where use is clearly shown that discontinuance allows for an efficient use of the Registrar's and the registered owner's time and resources. If a case is not discontinued, it will continue in the normal course with the Registrar giving the registered owner notice it may submit written representations. The pilot project will involve the issuance of a sufficient number of notices to ensure that the Registrar has collected enough data to decide whether the use of discontinuance is an effective means for expediting Registrar Initiated Section 45 proceedings.

This notice includes information on the selection of registrations for the pilot project, the procedure for discontinuance and provides information on the procedure that will be followed through to decision (for those proceedings which are not discontinued).

In formulating this pilot project, the Registrar attended meetings with stakeholders in Toronto, Vancouver, Ottawa and Montreal and solicited written comments.

For further information on section 45 proceedings generally, consult the FAQs on Section 45 Proceedings.

Relevant legislation and practice notices

This Pilot Project makes reference to the following legislation and practice notices:

On this page

Please note that the guidance set out in sections III-X is the same as that which is set out Practice in Section 45 Proceedings notice with the exception of the necessary modifications to reflect that there is no requesting party

I Selection of registrations

The Registrar may initiate a section 45 proceeding against any registration that has been registered for a period of more than three years. A section 45 proceeding initiated by the Registrar may be limited to particular goods or services set out in the registration.

The registrations chosen for participating in the pilot project will be chosen randomly from within two groups of registrations: those registered a threshold number of years ago or those including more than a certain number of Nice classes.

I.1 Registrations which will not be subject to registrar initiated section 45 proceedings

I.1.1 No authority to issue the notice

The Registrar will not issue a Section 45 Notice if there is no authority to do so. Following are examples of where the Registrar has no authority to issue a Section 45 Notice:

I.1.2 Good reasons not to issue the notice

The Registrar may also decline to issue a Section 45 Notice against a randomly chosen registration if there are good reasons not to issue a Section 45 Notice. Following are examples of what may be considered good reasons not to issue a Section 45 Notice:

I.2 Circumstances where only certain goods and services in a registration will be included in the section 45 notice

The Registrar will not include in its Registrar initiated Section 45 Notices goods and services which have been registered less than three years [section 45(1) of the Act].

I.2.1 Amended registration

Where a registration has been amended to extend the statement of goods or services under section 41 of the Act, the Registrar considers that the three-year period for such goods/services applies from the date of registration of the amendment. In that regard, reference may be made to section 41(2) of the Act, which provides that an application to extend the statement of goods/services in respect of which a trademark is registered has the effect of an application for registration of a trademark in respect of the goods or services specified in the application for amendment. Accordingly, a registered owner is not required to furnish evidence of use in respect of goods or services that have been listed in a registration for less than three years.

I.2.2 Merged registrations

Where a registration is the result of a merger pursuant to section 41(f) of the Act, the Registrar considers that the three-year period begins on the day the particular goods or services matured to registration. Accordingly, a registered owner is not required to furnish evidence of use in respect of goods or services that have been registered for less than three years.

If a registration subject to a section 45 proceeding is merged with another registration, the section 45 proceeding will continue but only with respect to the goods and services that were subject to the section 45 notice as issued.

I.3 Issuance of the section 45 notice

Section 45 Notices issued on the Registrar's own initiative will be sent to the address of record of the registered owner, with copy to the registered owner's recorded trademark agent in Canada, if any.

The Registrar is not responsible for any correspondence not received by the registered owner or its trademark agent, including the Section 45 Notice, in cases where the Registrar has not been notified of a change of address [section 6(2) of the Regulations].

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II Review and option for discontinuance

In all cases, the Registrar will review the evidence before notice is given that written representations may be submitted to assess whether the registered owner has shown use of the trademark in association with the registered goods and services specified in the Section 45 Notice.

II.1 When proceedings will be discontinued

II.2 When proceedings will be discontinued if some goods and services are deleted

II.3 When proceedings will continue

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III Correspondence

Correspondence addressed to the Registrar in respect of a section 45 proceeding must follow sections 3 to 15, 68 and 69 of the Regulations and the Canadian Intellectual Property Office's practice with respect to correspondence procedures. All correspondence relating to section 45 proceedings should:

Documents, including evidence, submitted to the Registrar are open to the public and cannot be returned to the registered owner [section 29(1)(f) of the Act].

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IV Evidence

In general, the rules of evidence which are applicable in the Federal Court are applicable in section 45 proceedings.

IV.1 Timing

The registered owner must furnish evidence within three months from the date of the Section 45 Notice [section 45(1) of the Act.

IV.2 Manner of submitting evidence

Evidence must be submitted to the Registrar by way of affidavit or statutory declaration [section 45(2) of the Act]. More than one affidavit or statutory declaration may be furnished on behalf of the registered owner, regardless of whether the affidavit or statutory declaration is signed by the registered owner [Canada (Registrar of Trademarks) v Harris Knitting Mills Ltd (1985), 4 CPR (3d) 488 (FCA)].

IV.2.1 Evidence in electronic form or by electronic means

Section 64(1) of the Act provides that any document, information or fee that is provided to the Registrar may be provided in electronic form and by electronic means as specified by the Registrar. This includes evidence. The form and means by which evidence may be electronically provided to the Registrar are set out in the Practice Notice entitled Electronic Evidence in Opposition and Section 45 Proceedings.

IV.3 Evidence of use of the registered trademark

The evidence furnished in response to the Section 45 Notice should demonstrate:

[section 45(1) of the Act]

The relevant definitions of "use" are set out in section 4 of the Act.

The evidence must show use of the trademark by the registered owner or an assignee entitled to be recorded as registered owner Star-Kist Foods Inc v Canada (Registrar of Trademarks) (1988), 20 CPR (3d) 46 (FCA)], licensed use of the trademark pursuant to section 50 of the Act, or licensed use of a certification mark pursuant to section 23(2) of the Act.

The type of evidence necessary to show use varies from case to case [Union Electric Supply Co Ltd v Registrar of Trademarks (1982), 63 CPR (2d) 56 (FCTD)]. However, the use of the trademark must be in compliance with section 4 of the Act and must be shown with respect to each of the goods and services listed in the registration or specified in the Section 45 Notice [section 45(1) of the Act].

The affidavit or statutory declaration must contain sufficient facts to support a conclusion that the trademark has been used in Canada, as opposed to containing bare assertions of use, which have been held to be insufficient to maintain a trademark registration under section 45 of the Act [Plough (Canada) Ltd v Aerosol Fillers Inc (1980), 53 CPR (2d) 62 (FCA)]. The evidence should be forthcoming in quality, not quantity [Phillip Morris Inc v Imperial Tobacco Ltd (1987), 13 CPR (3d) 289 (FCTD)].

IV.4 Evidence of licensed use

Where evidence of use is by a licensee of the registered owner pursuant to section 50 of the Act, it is not necessary to furnish a copy of any license agreement in a section 45 proceeding. A statement in the affidavit or statutory declaration that the registered owner had, under the license, direct or indirect control of the character or the quality of the subject goods or services is sufficient [Empresa Cubana Del Tabaco v Shapiro Cohen, 2011 FC 102, affirmed 2011 FCA 340].

IV.5 Evidence of special circumstances excusing non-use

In cases where the trademark was not in use at any time during the relevant period, the affidavit or statutory declaration should indicate the date the trademark was last in use and the reason(s) for the absence of use since that date.

In order for the registration not to be expunged, the Registrar must be satisfied that there were "special circumstances" excusing the absence of use during the relevant period. "Special circumstances" means circumstances or reasons that are unusual, uncommon, or exceptional [John Labatt Ltd v Cotton Club Bottling Co (1976), 25 CPR (2d) 115 (FCTD)].

The Registrar will consider all three of the following criteria in determining whether the evidence demonstrates special circumstances excusing the absence of use of the trademark in Canada:

[Canada (Registrar of Trade Marks) v Harris Knitting Mills Ltd, 4 CPR (3d) 488 (FCA) and Smart & Biggar v Scott Paper Limited (2008), 65 CPR (4th) 303 (FCA)]

IV.6 Consequences for registered owner's failure to furnish evidence

If the registered owner does not furnish any evidence in response to the Section 45 Notice, the trademark is liable to be expunged [section 45(3) of the Act].

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V Written representations

Written representations are not required in section 45 proceedings. If the registered owner does not submit written representations within two months of the Registrar issuing the notice setting the deadline to submit them or advises the Registrar that no written representations will be filed, the Registrar will proceed as soon as administratively possible to issue the final decision, unless the registered owner requests to be heard.

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VI Hearings

A registered owner may only make representations at a hearing if they file a request to be heard in accordance with the requirements set out in section 74(1) of the Regulations.

VI.1 Timing

The time within which a registered owner must give the Registrar written notice of its request to be heard is within one month from the submission of the registered owner's written representations (or statement that no written representations will be filed) or where no written representations have been submitted, within one month of its deadline to do so [section 74(2)(a) of the Regulations].

VI.2 Request for hearing

The request for hearing must specify the following information:

[section 74(1) of the Regulations]

If the registered owner has not furnished the specific information required by the Registrar in its request to be heard as detailed above, the Registrar will assume that the registered owner will appear in person and will schedule the hearing for two and a half hours, with representations to be made in the official language in which the request to be heard was made.

VI.3 Changes to hearing request

If a registered owner who has requested to be heard wishes to make any changes with respect to their appearance at a scheduled hearing, the registered owner should, as soon as possible and no less than one month prior to the scheduled hearing date, communicate such changes by:

No changes with respect to a hearing will be made until a request is received in writing. While reasonable efforts will be made, the Registrar may not be able to accommodate changes that are requested less than one month before the date of the scheduled hearing.

VI.4 Scheduling of hearings

Once the file is ready to be scheduled for a hearing, the Registrar will issue a notice to the registered owner setting out the time, date, location, manner and duration of the hearing and, the official language in which representations will be made in accordance with the information provided in the request for hearing.

The Registrar will issue a notice advising the registered owner of the scheduled hearing date at least 90 days prior to the hearing date.

VI.4.1 Rescheduling a hearing

The Registrar may reschedule a hearing date once, upon request, as soon as administratively possible.

VI.5 Cancellation of hearing

If a registered owner who has requested to be heard determines that the hearing no longer wishes to attend a hearing, then the registered owner should, as soon as possible, communicate this to the Registrar by:

A hearing will not be cancelled until such time as the registered owner requests for cancellation is received in writing.

If a hearing is cancelled, the Registrar will proceed to issue a decision in due course, except in cases where the section 45 proceeding has been discontinued by the Registrar or the registration has been voluntarily cancelled or expunged for failure to renew.

VI.6 Jurisprudence

At the hearing, the Hearing Officer/Member will have a copy of all case law included in the Common List of Authorities (Common List), which identifies cases that are frequently cited in opposition and section 45 proceedings.

At least  two weeks prior to the hearing date, by facsimile or email (to the email address provided in the hearing notice), the registered owner should provide the Registrar with:

The registered owner is not required to file a book of authorities. If the registered owner wishes the Hearing Officer/Member to refer at the hearing to any case law that is not identified in the Common List, it may bring copies to the hearing.

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VII Extensions of time

Nothing in this practice notice is intended to limit the discretion of the Registrar under section 47 of the Act. In this practice notice, references to circumstances when the Registrar will or will not grant an extension of time and the length of those extensions are intended as general guidance only. As such, any expressions stating the Registrar will or will not grant an extension of time are intended to be interpreted as the Registrar will generally grant or will generally not grant an extension of time.

Deadlines and available extensions of time at each stage of the proceeding
Stage of Proceeding Statutory deadline Benchmark extensions Extensions of time based upon exceptional circumstances
Registered owner's evidence 3 months from the date of the Section 45 Notice 4 months Determined on a case by case basis
Registered owner's written representations 2 months from the date of the notice inviting the registered owner to submit written representations Not available Determined on a case by case basis
Request for hearing 1 month from the earlier of the submission of the registered owner's written submissions or 1 month from the expiry of such deadline Not available Not available

Section 47 of the Act is discretionary. It enables the Registrar to grant extensions of time in section 45 proceedings if the Registrar is satisfied that the facts justify the need for an extension of time [Sandhu Singh Hamdard Trust v Canada (Registrar of Trademarks) (2007), 62 CPR (4th) 245 (FCA), affirming 47 CPR (4th) 373 (FCTD)].

All requests for an extension of time under section 47 of the Act must be accompanied by the prescribed fee [section 14 of the Regulations and Item 1 of the Schedule to the Regulations].

VII.1 Extensions of time – benchmark

The Registrar will grant one request for an extension of time up to a maximum benchmark of four months, for the registered owner to furnish evidence in response to a Section 45 Notice. The legislative intent behind section 45 is to provide an efficient and summary procedure for removing trademarks which are not in use from the Register. In view of this, further extensions of time for taking this step will only be granted in exceptional circumstances [see VII.2 below]. Likewise, extensions of time for taking any other steps in a proceeding will only be granted in exceptional circumstances.

The Registrar will not grant more than one request for a benchmark extension of time for a registered owner to furnish evidence, even where such multiple requests would only amount to the maximum benchmark of four months.

VII.2 Extensions of time – exceptional circumstances

The Registrar will only grant an extension of time beyond the benchmark for a registered owner to furnish its evidence or grant an extension of time for the registered owner to submit written representations, if exceptional circumstances have been demonstrated.

The Registrar will not grant an extension of time to extend the deadline for requesting a hearing.

Following are examples of what the Registrar may consider exceptional circumstances justifying an extension of the time.

VII.2.1 Recent change in the registered owner's instructing principal or trademark agent

If there has been a very recent change in the registered owner's instructing principal or trademark agent, the Registrar may grant an extension of time allowing a reasonable period of time to enable the new trademark agent or instructing principal to become familiar with the file.

VII.2.2 Circumstances beyond the control of the person concerned

Examples of factors that could amount to exceptional circumstances beyond the control of the person concerned include illness, accident, death, bankruptcy or other serious and unforeseen circumstances.

VII.2.3 Assignment of the registration

If there has been a recent assignment of the registration that is the subject of the section 45 proceeding, the Registrar may grant an extension of time allowing a reasonable period of time to enable the new trademark owner to become familiar with the file.

VII.3 Extensions of time – retroactive

If a registered owner is facing a statutory deadline that has already passed, the Registrar may consider a request for a retroactive extension of time [section 47(2) of the Act].

Requests for a retroactive extension of time must:

The Registrar will not grant a retroactive extension of time pursuant to section 47(2) of the Act for taking a step in a section 45 proceeding if the proceeding has already advanced to a subsequent stage.

The Registrar considers that there is no authority to grant a retroactive extension of time under section 47(2) after the Registrar has reached the final decision under section 45(3) of the Act [Re Wolfville Holland Bakery Ltd (1964), 42 CPR 88 (Ex Ct) and Ford Motor Co of Canada Ltd v Registrar of Trade Marks (1977), 36 CPR (2d) 135 (FCTD)].

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VIII Decision

The Registrar will render a final decision in writing, in accordance with section 45(3) of the Act, to maintain, amend or expunge the registration. The decision will be sent to the registered owner in accordance with section 45(4) of the Act.

Pursuant to section 45(5) of the Act, the Registrar shall act in accordance with the decision as soon as administratively possible if no appeal is initiated under section 56 of the Act or, if an appeal is initiated, the Registrar will act in accordance with the final judgement given in appeal, as the case may be.

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IX Appeals

The decision of the Registrar to maintain, expunge or amend the registration may be appealed to the Federal Court of Canada [section 56 of the Act]. Appeals must be filed in accordance with the Federal Courts Act and the Federal Courts Rules and filed with the Registrar in accordance with section 56(2) of the Act. See Service of Documents on the Registrar of Trademarks for further information.

X Madrid protocol registrations

A Registrar initiated section 45 proceeding against a Madrid Protocol Registration will follow the same process as a Registrar initiated section 45 proceeding against a domestic registration as set out above, with an additional step:

In the case of a Madrid Protocol Registration, once a final decision is reached and the appeal period has expired, if the registration is expunged in whole or in part, the International Bureau will be notified pursuant to rule 19 of the Common Regulations.

This practice notice is intended to provide guidance on the Canadian Intellectual Property Office practice and interpretation of relevant legislation. However, in the event of any inconsistency between this notice and the applicable legislation, the legislation must be followed. The provisions of this practice notice are general guidelines only, are not binding in any particular case and are subject to change.

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