Practice Notices in Canadian s.45 Trademark Expungement Proceedings
Introduction
Trademark expungement proceedings under section 45 of the Canadian Trademarks Act
Trademark expungement proceedings play a significant role in maintaining the integrity of the trademark registry.
The word expungement itself is quite descriptive of both the provision and proceeding.
These expungement proceedings – colloquially s. 45 proceedings – allow for the removal of trademarks that are no longer in use.
Removing dead or abandoned trademark registrations ensure that the register accurately reflects only active trademarks.
Hence these expungement proceedings facilitate removing dead and abandoned trademarks.
Active really means “in commercial use”, as commercial usage is a fundamental hallmark of the Canadian trademark system and laws.
In this context, Practice Notices issued by the Canadian Intellectual Property Office (CIPO) serve as indispensable guides for parties involved in s.45 proceedings.
This article looks at the significance of Practice Notices, offering insight into the considerations when navigating trademark expungement proceedings in Canada.
In this article, the phrase trademark expungement proceeding will be used interchangeably with s. 45 (expungement) proceeding.
S. 45 Proceeding – What Is It?
Section 45 of the Canadian Trademarks Act (s. 45) provides a mechanism for parties to challenge the validity of a registered trademark on the grounds of non-use.
This mechanism is an administrative determination at the Trademarks Office.
S. 45 of the Trademark Act provides a litmus test to determine which marks ought to be expunged.
According to this provision, a trademark owner must be able to demonstrate that their mark has been used in the ordinary course of trade .
Moreover, the trademark owner must be able to demonstrate that such commercial usage was within the preceding three years.
Failure to adduce proper evidence to satisfy the above may result in the subject registration may be expunged.
This mechanism ensures that the trademark register remains a reliable reflection of active trademarks, preventing the cluttering of unused or abandoned marks.
By removing the clutter, aspiring entrepreneurs are free to re-visit old and abandoned trademarks.
Moreover, an ability to demonstrate continuous commercial usage in the market place ensures the trademark register accurately reflects market conditions.
Commercial usage does not mean mere advertisement – commercial usage truly means sales in commerce.
The Role of Practice Notices
Practice Notices, issued by CIPO, serve as invaluable resources for parties involved in trademark expungement proceedings.
Practice Notices offer guidance on the procedural aspects, evidentiary requirements, and best practices for both trademark owners and challengers.
These Practice Notices provide a roadmap for navigating the process, ensuring that all parties have a clear understanding of their obligations and rights.
Key Considerations for Trademark Owners
1. **Evidence of Use**
Trademark owners involved in s.45 proceedings must be diligent in providing compelling evidence of use.
Practice Notices stipulate that evidence should be submitted in a manner that clearly demonstrates the use of the trademark in the ordinary course of trade.
The “ordinary course of trade” can include sales records, advertising materials, and any other relevant documentation.
All legitimate businesses keep significant records, and those records must at some point reflect trademark usage.
Without commercial usage, it is difficult if not impossible to argue that one truly has trademark rights.
Even marked physical samples are a suitable form of evidence, provided those samples accurately reflect actual market usage.
2. **Period of Non-Use**
It is imperative for trademark owners to be aware of the three-year period preceding the commencement of the proceedings.
This is an important timeline, and is relatively unforgiving.
During this timeframe, the subject trademark must have been actively used in order to withstand a challenge.
Practice Notices emphasize the importance of maintaining continuous and substantial use to maintain the validity of a trademark.
Even conditions such as temporary down markets do not typically provide a suitable excuse for non-usage.
Lack of usage over a period of three years is highly likely to result in (at least a part of) a trademark registration expungement.
A partial expungement would mean that certain goods and / or services would be deleted from the registration in question, while others would remain.
3. **Affidavits and Statutory Declarations**
Practice Notices provide specific guidelines regarding the format and content of affidavits or statutory declarations submitted as evidence of use.
This includes details such as the identity of the deponent, their relationship to the trademark owner, and a clear and concise account of the use of the trademark.
Concise does not necessarily mean brief.
Concise really means informative and on-point.
Good affidavit and statutory declaration evidence paints a complete and thorough picture.
A standard to aim for is to thoroughly inform someone who knows nothing of the entire situation.
Evidence, exhibits, and testimony should form a complete and through picture, informative and withstanding of scrutiny.
Technically lawyers or agents are not required but it is extremely helpful to have lawyers and agents prepare affidavits and statutory declarations.
Key Considerations for Challengers
1. **Grounds for Challenge**
Challengers must have a well-founded basis for challenging a trademark’s validity under section 45.
Expungement proceedings are not given as of-right and instead a burden must be met.
Practice Notices highlight the requirement for challengers to articulate specific grounds.
These grounds must be supported by evidence and demonstrate that the trademark in question has not been used in the ordinary course of trade.
Without satisfying these grounds, an expungement is all but impossible.
2. **Burden of Proof**
The onus is on the challenger to demonstrate that the trademark has not been used in accordance with the Act.
Practice Notices emphasize the importance of presenting compelling evidence that unequivocally supports the challenge.
In earlier times the odds of convincing the Registrar to issue a section 45 notice were favourable.
In modern times, this hurdle can be more significant to a challenger.
3. **Opportunity for Cross-Examination**
Practice Notices underscore the right of both parties to cross-examine each other’s evidence.
A trademark expungement proceeding is not litigation but is instead a quasi-judicial administrative proceeding.
Cross-examination provides an opportunity to scrutinize the credibility and reliability of the evidence presented.
An opportunity for cross-examination is important to ensure a fair and thorough evaluation of the case.
Conclusion
In the realm of Canadian trademark expungement proceedings, Practice Notices serve as indispensable tools for both trademark owners and challengers.
These Practice Notices offer detailed guidance on the procedural steps and evidentiary requirements, ensuring a fair and transparent process.
By adhering to the guidance provided in these notices, parties involved in s.45 proceedings can navigate the process with confidence.
Understanding these Practice Notices ultimately contributes to the integrity of the trademark registry in Canada.
Pnc IP Group is experienced in representing trademark owners before CIPO, including in trademark expungement proceedings.
More information regarding these Practice Notices, at the time of this writing, can be found at:
Readers of this article should be aware that over time the above links will naturally expire and become non-functional.
Printouts and PDF records are recommended for anyone looking to historically preserve information presented in the above links.
None of the information in any of our articles constitutes legal advice.
None of the information in our articles constitute advice as registered patent and trademark agents.
Pnc IP Group bears no responsibility for the accuracy of third party links.
All legislation, regulations, practice notices and practice manuals quoted or referenced in any article are quoted or referenced as they existed.
Pnc IP Group bears no responsibility for updates and changes to legislation, regulations, practice notices, and practice manuals.
All readers accept these articles as being written accurately for the time they were published.
All readers accept the accuracy and correctness of any article varies by time, statutory and regulatory amendments, case law, and practice updates.
All readers are forewarned to obtain independent legal advice.
All readers are forewarned to obtain independent registered patent and trademark agent advice.
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