The Purpose of Section 45 Proceedings
Section 45 of the Trademarks Act provides a mechanism for cleaning up the Register of Trademarks. Essentially, it allows for the removal of or invalidation of trademark registrations that are no longer in use in Canada. This is important because it prevents trademarks from remaining on the register indefinitely without any actual commercial activity to support them. The primary goal is to ensure the register accurately reflects trademarks that are genuinely being used in the marketplace. This process is initiated by a third party, known as the requesting party, who pays a fee to ask the Registrar to send a notice to the trademark owner. The owner then has to prove that their trademark is in use in Canada, or explain why it isn’t, within a specific timeframe. It’s a way to keep the register current and prevent the monopolization of trademarks that are essentially dormant.
Distinguishing Section 45 from Other Proceedings
It’s easy to get Section 45 proceedings mixed up with other trademark actions, but they’re quite different. Unlike an opposition proceeding, which happens before a trademark is registered and challenges its registration on various grounds, Section 45 proceedings occur after registration. They specifically target the use of a registered trademark. Another key difference is that Section 45 proceedings are initiated by any member of the public (upon payment of a fee), whereas oppositions are typically filed by parties with a direct interest in preventing the registration of a confusingly similar mark. Furthermore, Section 45 proceedings are focused solely on demonstrating use or justifying non-use; they don’t typically address issues like ownership disputes or the distinctiveness of the mark itself, which might be grounds for other types of legal action.
The Role of the Registrar in Section 45 Matters
The Registrar of Trademarks plays a central, albeit impartial, role in Section 45 proceedings. They are not a party advocating for either side; rather, they act as the adjudicator. The Registrar’s involvement begins when they receive a request to issue a Section 45 notice. After reviewing the request to ensure it meets the basic requirements (like the registration being at least three years old and the fee being paid), the Registrar issues the notice to the registered owner. Throughout the process, the Registrar manages the procedural aspects, sets deadlines for evidence and arguments, and ultimately makes a decision based on the evidence and submissions presented. The Registrar’s decision can result in the trademark registration being amended, or even entirely removed from the register, if the owner fails to demonstrate sufficient use.
Initiating a Section 45 Trademark Proceeding
Eligibility for Requesting a Section 45 Notice
Anyone can start a Section 45 proceeding. You don’t need to be a trademark owner or have any specific connection to the mark in question. The primary requirement is that the trademark registration must have been on the Register for at least three years. This rule is in place to prevent premature challenges to newer registrations. The Registrar also has the discretion to decline issuing a notice in certain circumstances, even if the basic criteria are met. This might happen if, for example, the registration has recently been the subject of a Section 45 proceeding.
The Request Process and Required Fees
To begin a Section 45 proceeding, a formal written request must be submitted to the Registrar of Trademarks. This request needs to clearly identify the specific trademark registration by its number. You can submit this request through the Canadian Intellectual Property Office’s (CIPO) e-Services portal, which is generally the most efficient method. Alongside the request, a prescribed fee must be paid. This fee is non-refundable and covers the administrative costs associated with initiating the process. It’s important to check the current fee schedule as these amounts can change.
The prescribed fee is mandatory for the Registrar to issue the Section 45 notice.
Limitations on Commencing Proceedings
While the eligibility criteria for initiating a Section 45 proceeding are relatively straightforward, there are a few limitations to be aware of. As mentioned, the registration must typically be at least three years old. Furthermore, the Registrar may refuse to issue a notice if the registration has been involved in a Section 45 proceeding within the preceding three years. This prevents a continuous barrage of challenges against the same registration. The Registrar also has the general discretion to refuse a notice if they believe it is not in the public interest or if there are other compelling reasons not to proceed. This ensures the process isn’t used vexatiously.
Considerations before initiating:
- Has the trademark been registered for more than three years?
- Has the registration been subject to a Section 45 proceeding recently?
- Are there any other potential grounds for the Registrar to refuse the notice?
It is highly recommended that any party considering initiating a Section 45 proceeding engage a registered trademark agent. Their familiarity with the process and requirements can significantly streamline the application and increase the likelihood of a successful commencement.
Responding to a Section 45 Notice
Receiving a Section 45 notice from the Registrar can feel a bit daunting, but it’s essentially a request for proof that your trademark is still in use. The primary goal here is to ensure the Register of Trademarks doesn’t hold onto registrations that are no longer actively used in connection with the stated goods or services. The registered owner has a specific timeframe to demonstrate this use.
The Registered Owner’s Evidentiary Burden
Once you receive a Section 45 notice, the ball is in your court. You need to provide evidence showing that your trademark has been used in Canada within the three years preceding the notice. If you haven’t been using the mark, you’ll need to explain any special circumstances that prevented its use. Failing to meet this evidentiary burden can lead to the cancellation of your registration, either entirely or for specific goods and services.
Acceptable Forms of Evidence
The most common way to satisfy the Registrar is by filing evidence in the form of affidavits or statutory declarations. These are sworn statements attesting to the use of your trademark. It’s important that these documents are prepared carefully and accurately reflect the reality of your trademark’s use.
- Affidavits: Sworn statements made before a person authorized to administer oaths.
- Statutory Declarations: Solemn affirmations made under the provisions of the Canada Evidence Act.
- Supporting Documents: While not standalone evidence, exhibits attached to affidavits or declarations (like invoices, advertisements, or packaging) can help corroborate the statements made.
Deadlines for Filing Evidence
Time is of the essence when responding to a Section 45 notice. Generally, you have three months from the date the notice was issued to file your evidence. However, it is possible to request an extension of time. A standard extension of two months is often available, and further extensions may be granted upon request and payment of the prescribed fee. It’s wise to consult the advanced trademark information for specific details on deadlines and extensions.
It is critical to mark your calendar with the initial deadline and any granted extension dates. Missing these deadlines can have serious consequences for your trademark registration.
The Evidence Stage in Detail
Crafting Effective Affidavits and Declarations
When a Section 45 notice is issued, the registered owner must provide evidence to show that their trademark was in use in Canada. This evidence typically takes the form of an affidavit or a statutory declaration. These are written statements of fact, sworn or affirmed before a person authorized to administer oaths, like a notary public or commissioner of oaths. The affidavit or declaration must clearly state, with respect to each good or service listed in the registration, whether the trademark was in use during the three-year period before the notice was issued. If it wasn’t used, the owner must explain the date it was last used and the reasons for the non-use.
It’s important that these documents are prepared carefully. They should identify any supporting documents or objects, which are then attached as exhibits. Think of it like building a case; each piece of evidence needs to be clearly presented and linked to the main argument. Remember, any information filed with the Registrar can become public, so avoid including sensitive personal details.
Specific Requirements for Use of Evidence
The core of the evidence is demonstrating use of the trademark in Canada. This means showing that the mark was actually employed in the marketplace in connection with the specified goods or services. This could involve:
- Advertising materials (brochures, flyers, online ads)
- Packaging or labels for the goods
- Invoices or sales records showing the sale of goods or services under the mark
- Photographs of the goods bearing the mark
- Website screenshots showing the mark in use for services
- Affidavits from employees or customers who have encountered the mark in use
Each piece of evidence should be clearly marked as an exhibit and referenced within the affidavit or declaration. The goal is to paint a clear picture for the Registrar that the trademark is, or has been, active in Canadian commerce.
Prohibited Methods of Evidence Submission
When submitting your evidence, there are specific methods that are not accepted. For instance, evidence should not be submitted by facsimile. This is due to potential issues with transmission quality, completeness, and the sheer volume of documents that can cause delays. Submitting evidence this way might mean it won’t be considered. Always check the current practice notices from the Trademarks Opposition Board for the most up-to-date guidance on acceptable submission methods, which typically include mail or courier services to the official address.
The Registrar will only consider evidence that is properly filed and served within the prescribed timeframes. Failure to adhere to these procedural requirements can have significant consequences for the registered owner’s case.
Navigating the Argument and Hearing Stages
Submitting Written Representations
Once the evidence has been filed and reviewed, the next step involves presenting arguments. The party that requested the Section 45 notice gets the first chance to submit written arguments. They can choose to file these representations or state that they do not wish to do so. Following this, the registered owner has a similar opportunity to submit their own written arguments or indicate they will not be filing any. It’s important to note that the Registrar does not typically file written representations in these proceedings.
The Opportunity for Oral Hearings
If either party, usually the registered owner, wishes to have an oral hearing, they must make this request within a specific timeframe after the written representations are submitted or after a statement is made that no representations will be filed. The Trademarks Opposition Board will then provide notification of the hearing schedule, typically around 90 days before the actual date. This hearing is a chance for both sides to verbally present their case to the Registrar.
The Registrar’s Decision-Making Process
After all evidence has been submitted, written arguments have been made, and any oral hearings have concluded, the Registrar will consider all the information presented. The Registrar then makes a written decision regarding the trademark registration. This decision will either maintain the registration as is, amend it by removing certain goods or services, or entirely expunge it from the register. This decision is not necessarily the end of the matter, as it can be appealed.
The process aims to ensure that registered trademarks are genuinely in use. If a mark hasn’t been used as claimed, it can be removed or modified. This keeps the register accurate and relevant.
Key Stages in Argument and Hearing:
- Written Representations: Both parties can submit their legal arguments in writing.
- Oral Hearing Request: A party can request to present their case verbally.
- Hearing Scheduling: If granted, the hearing is scheduled with advance notice.
- Registrar’s Decision: A final written decision is issued based on all proceedings.
Costs and Financial Considerations
When you’re involved in a Section 45 trademark proceeding, it’s important to be aware of the financial aspects. These proceedings, while designed to keep the trademark register current, do come with associated costs.
Prescribed Fees for Initiating Proceedings
To get a Section 45 proceeding started, a specific fee must be paid to the Canadian Intellectual Property Office (CIPO). This is a mandatory requirement to request that a notice be sent to the trademark owner. The exact amount is subject to change, so it’s always best to check the current fee schedule. Payments can typically be made through CIPO’s online services.
Costs Associated with Defence and Representation
While the initial request fee is relatively modest, the costs can escalate significantly for the trademark owner who needs to defend their registration. This involves preparing evidence, which often means drafting affidavits or statutory declarations. Engaging a trademark agent or legal counsel to assist with this evidence preparation and to represent your interests throughout the process is common. These professional fees can represent a substantial portion of the overall expense.
The Absence of Cost Recovery Provisions
One of the key financial considerations in Section 45 proceedings is that there is generally no provision for the recovery of costs. This means that even if you are successful in defending your trademark registration, you cannot claim back the legal fees or other expenses you incurred from the party that initiated the proceeding. Similarly, if you are the requesting party and your request is successful, you will not be reimbursed for your expenses by the trademark owner. This ‘each party bears its own costs’ rule means that both sides must be prepared to fund their own case from start to finish. This is a significant factor when deciding whether to initiate or defend such a proceeding, and it underscores the importance of carefully considering the potential financial outlay before committing to the process. It’s a good idea to discuss this with your representative, especially if you are considering an opposition to a trademark application, as similar cost principles often apply.
The financial implications of Section 45 proceedings are often underestimated. Parties must budget not only for the initial filing fees but also for the potential costs of evidence gathering, legal representation, and any necessary filings or appearances, all without the prospect of recovering these expenses from the opposing party.
The Timeline of a Section 45 Proceeding
Typical Duration of Proceedings
Section 45 proceedings can take a fair bit of time to wrap up. It’s not usually a quick process. Most cases take between two and four years from start to finish, though some can drag on even longer. This extended timeframe is due to the various stages involved, including evidence gathering, written arguments, and potential oral hearings.
Factors Influencing the Timeline
Several things can affect how long a Section 45 proceeding lasts. The complexity of the case is a big one; if there are a lot of goods or services involved, or if the evidence is particularly intricate, it will naturally take more time. The number of requests for extensions of time also plays a role. If either party needs more time to prepare their evidence or arguments, this can push the overall timeline back. The Registrar’s caseload is another factor; a busy docket can mean slower processing times for all matters.
Scheduling of Oral Hearings
Oral hearings are scheduled after both parties have submitted their written arguments. The Registrar’s office will typically contact the parties to arrange a suitable date. It’s important to be prepared for this, as it’s often the final opportunity to present your case directly to the decision-maker. The availability of the hearing room and the parties’ legal representatives will influence when the hearing can actually take place.
Here’s a general breakdown of the typical stages and their approximate durations:
| Stage | Approximate Duration |
|---|---|
| Request and Notice Issuance | 1-2 months |
| Evidence Filing (Owner) | 3 months (plus extensions) |
| Written Representations | 1-2 months per party |
| Oral Hearing | Scheduled as available |
| Registrar’s Decision | 1-3 months after hearing |
It’s worth noting that these are estimates, and actual timelines can vary significantly based on the specific circumstances of each proceeding.
Appealing a Section 45 Decision
Grounds for Appeal to the Federal Court
If you are unhappy with the final decision made by the Registrar in a Section 45 trademark proceeding, you have the option to appeal this decision. The appeal must be made to the Federal Court. This is outlined in Section 56 of the Trademarks Act. The grounds for such an appeal typically revolve around errors of law or fact made by the Registrar during the proceeding. This could include misinterpretations of the evidence presented, incorrect application of the law regarding trademark use, or procedural unfairness.
The Appellate Process Overview
Appealing a decision involves a formal legal process. After the Registrar issues a final decision, the dissatisfied party has a specific timeframe to file a notice of appeal with the Federal Court. This notice must clearly state the grounds for the appeal. Following this, both parties will have the opportunity to submit written arguments to the Court. Depending on the complexity of the case and the Court’s discretion, an oral hearing may be scheduled where legal counsel can present their arguments directly to the judge. The Federal Court will then review all the evidence and arguments before rendering its own decision.
Consequences of a Final Decision
The outcome of an appeal can have significant consequences for the trademark registration. If the Federal Court upholds the Registrar’s decision, the trademark registration may be amended or entirely removed from the Register, depending on the findings regarding use. Conversely, if the Court overturns the Registrar’s decision, the registration will likely be maintained as it was. It is important to note that costs can be awarded by the Federal Court, which differs from the Section 45 proceeding itself where cost recovery is generally not available. Engaging legal counsel experienced in trademark law is highly recommended when considering an appeal.
| Stage of Appeal | Typical Timeframe (from Registrar’s Decision) | Key Actions |
|---|---|---|
| Filing Notice of Appeal | Within 60 days | Appellant files notice with the Federal Court and serves it on the other party |
| Written Submissions | Varies; Court sets deadlines | Both parties submit their legal arguments and supporting documentation |
| Oral Hearing (if held) | Scheduled by the Court | Legal counsel presents arguments and answers questions from the judge |
| Court Decision | Varies | Federal Court issues a written judgment |
Registrar-Initiated Section 45 Proceedings
The Pilot Project and Its Objectives
In a notable shift, the Canadian Intellectual Property Office (CIPO) has introduced a pilot project where the Registrar can initiate Section 45 trademark proceedings. The primary aim here is to ensure the accuracy and currency of the Register of Trademarks. By proactively identifying registrations that may no longer be in use, CIPO seeks to remove “dead wood” and promote fair competition. This initiative provides valuable insight into the actual use of registered marks across Canada, thereby maintaining the integrity of the trademark system. The project is structured in phases, with initial data collection and subsequent consultations to gauge its effectiveness and potential for continuation.
Categories of Selected Registrations
Registrations are not chosen at random for this pilot project. Instead, the Registrar focuses on specific categories to ensure a targeted approach. These categories generally include:
- Registrations based on actual use in Canada.
- Registrations based on proposed use, where a declaration of use has already been filed.
- Registrations that claim use and registration abroad.
- Registrations with multiple filing bases.
- Any remaining registrations that have been on the register for more than three years.
The Registrar may limit the scope of the Section 45 notice to specific goods or services listed in a registration. This means a proceeding might not affect the entire registration, but only certain aspects of it.
Registrar’s Discretion to Decline Issuance
While the Registrar initiates these proceedings, there are circumstances under which they may decide not to proceed. This discretion is important for administrative efficiency and fairness. The Registrar might decline to issue a Section 45 notice if:
- The trademark registration is already involved in another ongoing Section 45 proceeding or a related appeal.
- A previous Section 45 notice concerning the same mark was issued within the last three years and resulted in a final decision.
- Issuing the notice would be considered frivolous or without merit.
These considerations help prevent unnecessary administrative burden and ensure that proceedings are initiated for valid reasons.
Seeking Professional Assistance
The Importance of Engaging a Trademark Agent
Receiving a Section 45 notice can be quite unsettling, especially if you’re not familiar with the intricacies of trademark law in Canada. These proceedings, while designed to clear the register of unused marks, can have serious consequences for your brand if not handled correctly. It is highly advisable to engage a registered trademark agent at the earliest opportunity. These professionals possess the specific knowledge and experience required to navigate the complexities of Section 45 matters. They understand the evidentiary burdens placed upon trademark owners and can guide you in gathering and presenting the appropriate proof of use. Without professional assistance, there’s a significant risk of inadvertently failing to meet the requirements, potentially leading to the expungement of your valuable trademark registration.
How Legal Counsel Can Strengthen Your Case
While a trademark agent is often the first point of contact, legal counsel, particularly those with a focus on intellectual property litigation, can provide an additional layer of support. They are adept at crafting persuasive arguments and can represent your interests effectively during the hearing stages. If the matter escalates or involves complex legal interpretations, their involvement can be instrumental in defending your rights. They can also advise on the strategic implications of the proceeding beyond just the immediate Section 45 notice.
Contacting Substance Law for Expert Guidance
For those facing a Section 45 proceeding, understanding your options and acting promptly is key. Substance Law has a dedicated team experienced in Canadian trademark law. We can assist with:
- Assessing the validity of a Section 45 request.
- Preparing and filing the necessary evidence of trademark use.
- Drafting written representations and arguments.
- Representing you at oral hearings before the Registrar.
- Advising on potential appeals to the Federal Court.
Don’t leave your trademark rights to chance. Reach out to us to discuss your specific situation and how we can help protect your brand’s presence on the Canadian trademark register.
Frequently Asked Questions
What exactly is a Section 45 trademark proceeding?
Think of it as a way to check if a trademark is still being used. If a trademark has been registered for three years or more, someone can ask the government office (the Registrar) to send a notice to the owner. This notice asks the owner to prove they’ve been using the trademark in Canada. If they can’t prove it, the trademark might be removed from the official list.
Who can start a Section 45 proceeding?
Pretty much anyone can start one. You don’t need to be involved with the trademark in any special way. You just need to know the trademark’s registration number and be willing to pay a small fee to get the process rolling.
What does the trademark owner have to do if they get a Section 45 notice?
The owner needs to show proof that they have been using their trademark in Canada. This proof usually comes in the form of official statements, called affidavits or statutory declarations. These statements must clearly show how the trademark was used with the specific products or services it’s registered for, within the last three years.
What if the trademark owner can’t show proof of use?
If the owner cannot provide sufficient evidence of using the trademark, or if there’s a good reason why it wasn’t used, the Registrar might decide to remove the trademark from the register. Sometimes, only certain parts of the registration (like specific goods or services) might be removed if use can’t be proven for them.
How long does a Section 45 proceeding usually take?
These processes can take quite a while, often between two to four years, and sometimes even longer. This is because there are several steps involved, including filing evidence and potentially having hearings.
Can the winner get their costs paid by the other side?
Unfortunately, no. In Section 45 proceedings, each party usually has to cover their own costs. So, even if you win, you generally won’t get the money you spent on lawyers or preparing evidence back from the other side.
What happens after the Registrar makes a decision?
Once the Registrar has reviewed all the evidence and arguments, they will issue a written decision. If the trademark owner is unhappy with this decision, they have the right to appeal it to a higher court, specifically the Federal Court.
What is the new pilot project about?
Recently, the government started a new test program where the Registrar can start Section 45 proceedings on their own, without a third party asking. The goal is to make sure the official trademark register only lists trademarks that are actually being used in Canada. This means trademark owners might receive notices directly from the Registrar, even if no one else complained.
