FAQ on Section 45 Proceedings—The Requesting Party

From: Canadian Intellectual Property Office

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General information

What is a section 45 proceeding?

Section 45 of the Trademarks Act allows anyone to request that a trademark registration be removed 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 (the relevant period).

Section 45 proceedings are managed by the Trademarks Opposition Board on behalf of the Registrar of Trademarks.

How long does the process take?

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

What are the stages of a section 45 proceeding?

Section 45 proceedings involve the following stages:

  1. Request for a section 45 notice
  2. Section 45 Notice
  3. Evidence
  4. Written Representations (optional)
  5. Hearing (optional)
  6. Decision
  7. Appeal

For more information regarding each step/stage of the proceeding, please consult the practice notice: Practice in Section 45 Proceedings.

Who can request the issuance of a section 45 notice?

Anyone (the requesting party) may request that a section 45 notice be sent, as long as the trademark has been registered for at least three years and the request is accompanied by a $400 filing fee. The requesting party can be an individual or an entity.

The Registrar will, generally, send a section 45 notice to the registered owner of the trademark identified in the request. Upon receipt of the section 45 notice, the registered owner must file evidence showing use of the registered trademark in Canada during the relevant period.

What are the deadlines for each stage of a section 45 proceeding?
How can I obtain information regarding the status of a section 45 proceeding?

You can check the status of a section 45 proceeding on the Canadian Trademarks Database:

How do I correspond with the Registrar?

You must clearly mark all section 45 correspondence with the Registrar "Attention: section 45 proceedings" and you must identify:

You can send documents to the Registrar electronically or by regular or registered mail, courier, or fax. You can also submit them in person or by courier at CIPO or at any designated establishment.

Please note that you must send to the other party, on the same day, a copy of all correspondence sent to the Registrar, other than a document you are otherwise required to serve. See further information concerning correspondence with the Registrar.

How do I send documents electronically to the Registrar?

For the purposes of trademark opposition proceedings, you can use the Board's e‑services system. For details on what can be sent and size limits of documents, please consult the practice notice, "Electronic evidence in opposition and section 45 proceedings". For help with using the Board's e-services, please consult Online Help — Trademarks Opposition e-Services.

What is a "designated establishment"?

The Department of Innovation, Science and Economic Development has physical offices in many cities across the country. If you do not live in the National Capital Region, you can physically bring your documents (or courier them) to any of these offices and it will be considered sent to the Registrar. Please consult "Correspondence Procedures" to find addresses of designated establishments.

How do I pay the appropriate fee(s) and who do I pay?

The appropriate fees are listed in the Trademark Regulations Tariff of Fees schedule. Please contact the Client Service Centre for currently acceptable means of payment or consult our website on How to Make a Payment.

Please also see the practice notice: Fee Payment Practice of the Canadian Intellectual Property Office.

Do I need to hire a trademark agent?

No, a trademark agent is not required, but if you do not already have a registered trademark agent, we urge you to hire one at this point. Section 45 proceeding can be complex. You should choose a trademark agent with expertise in this field.

How can I find a trade-mark agent? Can CIPO recommend a trade-mark agent?

CIPO cannot recommend a trade-mark agent. A list of trade-mark agents is available online or by contacting the CIPO Client Service Centre.

Can I remove or change my agent?

Yes, you or your newly appointed agent can make a request to change your agent. The request must be made in writing and sent to the Registrar.

What kind of assistance can the Trademarks Opposition Board provide?

The Board cannot provide legal or substantive advice with respect to your case, nor can the Board comment on the merits of your case. However, the Board can provide general information with respect to section 45 procedure.

I have received a document in French (or English) from the other party in a section 45 proceeding, and I only understand English (or French, as the case may be). Can you provide me with a translated version?

No, the Registrar does not provide translation services. We recommend that you contact a translator.

Section 45 notice

How do I request the issuance of a section 45 notice?

You must submit a request to the Registrar together with the prescribed $400 filing fee for a section 45 notice to be issued.

Unless the Registrar finds that there is no good reason for doing so, they will issue a section 45 notice to the registered owner.

I have reached a settlement with the registered owner; can the section 45 notice be withdrawn?

This is at the discretion of the Registrar. You must make a request in writing to the Registrar's attention clearly indicating that both parties consent to it, and you must do so prior to the issuance of the Registrar's decision.

Evidence

What does "evidence" mean?

Evidence is any testimony, document or object that a party relies on to prove its position. The evidence filed in response to a section 45 notice must be in the form of an affidavit or statutory declaration. You will have to identify any documents or objects (or photos of objects) that support the testimony in the affidavit or the statutory declaration and to attach them as exhibits.

What is an affidavit or a statutory declaration?

An affidavit or statutory declaration is a written declaration or statement of facts that is confirmed by an oath or affirmation in the presence of a commissioner of oaths or a notary public. If the written declaration or statement of facts refers to documents or objects (or photos of objects), they must be attached to the document as exhibits and also signed by the commissioner of oaths or notary public.

The commissioner of oaths or notary public will confirm that the person who signed the written declaration or statement of facts did so after having attested to the truth of the information contained in the affidavit or the statutory declaration.

How long does the registered owner have to send and serve the evidence?

The Registrar must receive the registered owner's evidence within three months of the date of the section 45 notice or within the extended deadline given to the owner by the Registrar. You must also be served with that evidence within the same time span.

If the deadline falls on a weekend or statutory holiday, it will be extended, in accordance with section 66 of the Trademarks Act, to the next day the Office of the Registrar is open for business. Please consult the Correspondence Procedures: Statutory Holidays for more information.

What happens if the registered owner does not send the evidence in time?

Unless the registered owner is able to obtain a retroactive extension of time from the Registrar under section 47(2) of the Trademarks Act, the trademark is liable to be expunged. The Registrar will issue a final decision expunging the trademark registration in accordance with section 45(3) of the Trademarks Act.

Can I submit evidence?

No, only the registered owner can submit evidence in a section 45 proceeding. However, you may file written representations and/or make representations at a hearing.

Can I question the person(s) who signed affidavit(s) or statutory declaration(s) that was (were) submitted as part of the registered owner's evidence?

No, there is no provision for cross-examination in a section 45 proceeding.

What happens if the trademark was not used during the relevant period?

If the trademark was not used during the relevant period, the registered owner's affidavit or statutory declaration should indicate the date the trademark was last in use (or that the trademark was never used) and the reason(s) for the absence of use during the relevant period.

In order for the registration not to be expunged, the Registrar must be satisfied that the registered owner's evidence demonstrates "special circumstances" excusing the absence of use of the trademark in Canada.

What happens after the registered owner files the evidence?

The Registrar will send each party a notice asking it to file and serve written representations in turn, if it wishes to do so, beginning with the requesting party.

Written representations

How long do I have to submit my written representations?

The Registrar will send you a notice stating that you have two months from the date of the notice to submit and serve your written representations. Deadlines that fall on a weekend or a statutory holiday will be extended to the next day that CIPO is open for business.

Can I request an extension of time to file written representations?

No, the Registrar will not grant requests to extend the administrative deadline for filing written representations.

What do I put in my written representations?

You must present in writing the reasons why the evidence filed by the registered owner does not show that the trademark was in use in Canada at any time during the relevant period. If the trademark was not in use in Canada during the relevant period, you may make submissions as to why there is insufficient reason to excuse the absence of use. You may not include your own evidence in your written representations.

What do I do with my written representations?

You have to send your written representations to the Registrar, and serve a copy on the registered owner within two months from the date of the notice to submit and serve written representations.

You also need two copies of a letter informing the Registrar of the effective date and method of service you chose to serve your written representations on the registered owner: the original for the Registrar and a copy for the registered owner. We recommend making a copy of your written representations for yourself as well.

It is recommended to plan ahead and keep filing deadlines in mind, as delays in the delivery of mail and unexpected technological problems can occur. Do not wait until the last day to submit your documents, since they might not arrive or be received on time.

What is the difference between "sending" and "serving" a document?

In terms of a section 45 proceeding, documents are "sent" to the Registrar, but are "served" on the registered owner. Service, in a legal, sense, provides the Board with assurances that the registered owner has, in fact, received the documents sent by the requesting party. For a document to be properly "served", it must be in the manner prescribed in the Trademarks Regulations.

What is an effective date of service of documents?

The effective date of service of a document depends upon the manner of service. The following chart provides information.

Effective date of service
Manner of service Effective date of service
Personal service Day the document is delivered
Registered mail Day the document is mailed
Courier Day the document is provided to the courier
Electronic means Day the document is transmitted, determined by the day of the party sending the transmission
Notice Day the notice is sent
How do I serve my documents on the registered owner?

There are four manners of service to the requesting party that will always be acceptable:

Service by any other method, including electronically, is also acceptable, but only with the consent of the registered owner. For example, if you want to send a copy of your written representations to the registered owner by regular mail service or by email, you need to obtain the registered owner's consent in writing before doing so. If the registered owner refuses delivery by regular mail or email, you will have to use one of the other three acceptable methods of delivery.

Where do I find the registered owner's correspondence address?

The registered owner's address (or the address of its representative for service, as the case may be) is indicated at the bottom of the section 45 notice. You can also look up the registered owner's correspondence address in the Canadian Trademarks Database:

You should serve your documents to the address identified in the registrant field "Agent". If there is no information for the registered owner's agent, then use the address identified in the "Registrant" field.

Do I have to file and serve written representations?

No, written representations are optional.

Will I receive a copy of the registered owner's written representations?

If the registered owner chooses to file written representations, the registered owner will serve on you a copy of their written representations.

What happens if the registered owner does not file any written representations?

After the deadline for filing the registered owner's written representation has expired, you and the registered owner have one month from the registered owner's deadline for filing its written representations to request a hearing. If no hearing is requested, a decision will issue in due course.

What happens after the deadline to file written representations has expired if neither party filed written representations?

Unless one or both parties request to be heard at a hearing, the Registrar will issue the final decision based on the registered owner's evidence alone as soon as administratively possible.

Hearing

What do I do if I want a hearing?

Within one month following the final deadline for the submission of the registered owner's written representations, the parties may file a request to the Registrar to orally present representations. This is called a hearing.

Hearings are optional. You can request a hearing even if you did not file written representations. However, you can make representations at a hearing only if you file a request to do so.

Your hearing request may be conditional on the registered owner also requesting to be heard, but if both parties file conditional requests, a hearing will not be scheduled.

In your request, you must specify whether:

You must also send a copy of your request to the registered owner (in this case, service is not necessary).

Can I request an extension of time to request a hearing?

No, the Registrar will not grant extensions of time to request a hearing.

When will a hearing be scheduled?

A hearing will be scheduled as expeditiously as possible and the Registrar will send the parties a notice with the date, place and time at least 90 days in advance of the scheduled hearing.

What happens if the registered owner has requested a hearing and I did not?

A hearing will be scheduled, but only the registered owner will be allowed to make representations.

Can a hearing be postponed/rescheduled?

Yes, the Registrar will accept to reschedule a hearing once, upon request if the party that requested the hearing is not available on the scheduled date and the other party consents. However, hearings will generally only be rescheduled once.

If a party who has filed a request for hearing no longer wishes to attend a hearing, the party should, as soon as possible, communicate this to the Registrar. If both parties requested a hearing, it will be cancelled only if both parties consent to the cancellation. A hearing will not be cancelled until such time as the party or parties' request for cancellation is received in writing.

If a hearing is cancelled, the Registrar will proceed to issue a decision in due course. The Registrar will not agree to not issue a decision based on consent of the parties and/or pending settlement negotiations.

Do I have to participate in a hearing in person?

No, you may also participate through teleconference or videoconference. When you request a hearing or to participate in a hearing, you must inform the Registrar that you wish to participate through teleconference or videoconference. You must provide the Registrar with the telephone number that you will be utilizing for the hearing, so that teleconferencing or videoconferencing arrangements can be made in advance.

How are hearings conducted?

At the beginning of the hearing, the Board member or officer may provide a brief overview of the particulars of the case to be heard and the procedure to follow for the hearing. The hearing officer or member will then deal with any preliminary matters. The requesting party is then given the first opportunity to make representations, followed by the registered owner. After the registered owner has made its representations, the requesting party is entitled to make a short rebuttal. The hearing officer may ask questions at any point during the hearing.

There is a hearing scheduled for tomorrow, may I attend as an observer?

Yes, oral hearings are open to the public. A list of upcoming hearings is available online. Should you wish to attend an oral hearing, please contact the Trademarks Opposition Board in advance at 819-997-7300.

Decision

How is a decision rendered?

The member or the officer of the Trademarks Opposition Board who presided over the hearing will render a decision in writing on behalf of the Registrar. The decision is based on the record, including the evidence filed by the registered owner, the written representations submitted by either or both parties as well as the representations made at the hearing. The Registrar will send a copy of the decision to both parties once it has been issued.

How will the case be decided if there is no hearing?

The file will be assigned to a member or an officer of the Trademarks Opposition Board who will render a decision in writing on behalf of the Registrar. The decision will be based on the record, including the evidence filed by the registered owner and any written representations submitted by either or both parties. The Registrar will send a copy of the decision to both parties once it has been issued.

How do I obtain copies of Trademarks Opposition Board decisions?

CIPO's website provides a link to Trademarks Opposition Board decisions published by Decisia. You can also obtain photocopies and certified copies of Trademarks Opposition Board decisions that pre-date those published by Decisia:

The Trademarks Opposition Board recently issued a decision to expunge a trademark registration. Why does the registration still appear as active in the trademarks database?

If no appeal was filed, the trademark will be recorded in the database as expunged once the appeal period expires (see section 45(5) of the Trademarks Act). The appeal period is two months from the date when the Registrar sends notice of the decision, but can be extended by the Federal Court of Canada (see section 56 of the Trademarks Act).

Does the Registrar have the jurisdiction to award costs to a party?

No, the Registrar does not have the authority to award costs to a party. Neither the Trademarks Act nor the Trademark Regulations permit the Registrar to award such costs.

Appeal

If I do not agree with the Registrar's decision in a section 45 proceeding, what can I do?

You can file an appeal with the Federal Court of Canada. You have two months from the date on which the Registrar sends notice of the decision to file an appeal. The Court may allow you to file an appeal after more than two months (See section 56 of the Trademarks Act). Contact the Federal Court of Canada for further information regarding what is necessary to file an appeal.

Who can appeal a decision of the Registrar?

Only parties to the proceeding can appeal a decision of the Registrar.

Further information

See the practice notice: Practice in section 45 proceedings for further details. If you have additional questions, please contact the CIPO Client Service Centre. Please note that CIPO cannot provide legal or substantive advice with respect to your case, recommend a trademark agent or comment on the merits of your case. However, CIPO can provide general information with respect to section 45 procedure.

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