Archived — Practice Notice: Section 45 Proceedings, Publication Date: 2005-12-21
The Trademarks Opposition Board will be changing its practice in section 45 proceedings as of September 14, 2009 through the introduction of a new practice notice entitled "Practice in Section 45 Proceedings"
Section 45 Proceedings
Publication Date: 2005-12-21
This practice notice supersedes all practice notices previously issued in respect of section 45 procedure. The provisions of this practice notice are general guidelines only, are not binding in any particular case, and are subject to change.
All correspondence in section 45 proceedings should (i) be addressed to the Registrar of Trademarks, (ii) be clearly marked "attention: section 45 proceedings," (iii) quote the name of the trademark, its registration number and our Office file number, (iv) indicate that a copy of the correspondence was sent to the other party, and (v) deal with section 45 matters only.
II. The Issuance Stage
- Issuance when the trademark has been on the register for less than three years: the Registrar will issue a section 45 Notice against a registration that has been on the register for a period of less than three years, if it is shown by way of affidavit or statutory declaration that exceptional circumstances warrant sending the Notice.
- Issuance where the registration has been amended to extend the statement of wares or services: the Registrar will not issue a section 45 notice against such additional wares or services within three years of the date of registration of the amendment unless it is shown by way of affidavit or statutory declaration that exceptional circumstances warrant sending the notice.
- Issuance when the trademark has been on the register for three years or more: upon receipt of awritten request under subsection 45(1) made after three years from the date of registration, the Registrar will, unless he sees good reason to the contrary, issue a section 45 notice to the registered owner, along with a copy to the agent of record, if any, and will advise the requesting party accordingly.
- Requests for the issuance of a section 45 notice under paragraph (c) must be accompanied by the prescribed fee of $400 (previously $150).
III. The Evidence Stage
- Failure to file evidence in response to a section 45 notice will lead to the automatic decision to expunge the trademark registration
- All evidence furnished in response to a section 45 notice must be in the form of an affidavit or statutory declaration.
- If the trademark is in use, use must be shown to have occurred at anytime within the three-year period preceding the date of the notice (previously "two-year period") and must be shown with respect to each of the wares and services mentioned in the registration: John Labatt v. Rainier Brewing Co. et al. (1984), 80 C.P.R. (2d) 228 (F.C.A.); Plough Canada Ltd. v. Aerosol Fillers Inc., 45 C.P.R. (2d) at 149 (F.C.T.D.) and 53 C.P.R.(2d) at 62 (F.C.A.).
However, based on Saks & Co. v. RTM et al. (1989), 24 C.P.R. (3d) 49 (F.C.T.D.), where the registration contains several categories of wares or services and each category contains several items of wares or several services, the Registrar may accept:
- a general statement of use of the mark within the relevant period in relation to each item of wares and/or service listed in the registration together with;
- a description of the use made of the trademark during the relevant period in association with each item of wares and/or service and examples of use in relation to a few items of wares and/or services in each category.
- Use must be in compliance with section 4(1), section 4(2) or section 4(3) of the Act.
- If the trademark was not in use at any time during the three years preceding the date of the notice, the registrant is required to show the date of last use and reasons for the absence of use since such date. For consideration of special circumstances excusing non-use see: RTM V. Harris Knitting Mills Ltd. (1985), 60 N.R. 380 (F.C.A.) and Lander Co. Canada Ltd. v. Alex MacRae & Co. (1992), 46 C.P.R. (3d) 417 (F.C.T.D.).
IV. The Hearing Stage
- The Registrar will generally invite the parties sequentially to filewritten submissions pursuant to the provisions of subsection 45(2) of the Act, and an administrative delay of two months will be provided to each party for that purpose.
- Requests for an oral hearing must be filed within one month following the final deadline for the submission of the registrant'swritten submissions.
V. Extensions of Time
- All requests for extensions of time must contain reasons explaining why the additional time is needed.
- Requests for extensions of time for filing evidence made pursuant to subsection 47(1) must be accompanied by the prescribed fee of $125 (previously $50).
- Requests for extensions of time for filingwritten submissions and for requesting an oral hearing are mere administrative extensions of time not relating to deadlines fixed by the Act and do not require payment of a fee.
- The following standard extensions will be granted in respect of a first request for an extension of time at a particular stage of the proceedings:
- to file evidence: 3 months;
- to filewritten submissions: 3 months;
- to request an oral hearing: 1 month.
No requests for further extensions of time will be considered unless the other party consents or exceptional circumstances are shown.
- No requests for a retroactive extension of time pursuant to subsection 47(2) to file evidence will be granted unless accompanied by the prescribed $125 fee (previously $50) and facts are set forth to justify the conclusion that the failure to do the act or apply for an extension within the time limit was not reasonably avoidable.
- Where a request for an extension of time other than a retroactive extension of time is refused, the party will be given one final month from the date of refusal to comply.
The Registrar has no authority to order cross-examination on an affidavit or statutory declaration filed in section 45 proceedings: Burke-Robertson and Carhartt Canada Ltd. v. RTM (1994), 56 C.P.R. (3d) 353.
The Registrar may terminate the proceedings upon receipt of a request to cancel the section 45 proceedings signed by or on behalf of both parties.
- Date modified: