Cancelling a Trademark in Canada is a relatively simple procedure. To cancel a trademark, you need to start a section 45 proceeding. The trademark owner must file evidence showing use of the registered trademark within the 3 years before the day that the section 45 proceeding starts. If the trademark owner does not respond, the trademark will be canceled in about 6 to 9 months.
Sometimes you will be only partially successful in canceling a trademark registration if the trademark is being used in connection with some goods and services, but not all of the goods and services claimed in the registration. That may be a good enough win sometimes.
The use of the trademark must be more than in the trademark registrant’s general advertising. The use of the trademark must be in the trademark sense, as detailed in section 4 of the Trademarks Act:
When is a trademark deemed to be used? According to Section 4 of the Trademarks Act,
4 (1) A trade-mark is deemed to be used in association with goods if, at the time of the transfer of the property in or possession of the goods, in the normal course of trade, it is marked on the goods themselves or on the packages in which they are distributed or it is in any other manner so associated with the goods that notice of the association is then given to the person to whom the property or possession is transferred.
(2) A trade-mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.
Use by exporting goods
(3) A trade-mark that is marked in Canada on goods or on the packages in which they are contained is, when the goods are exported from Canada, deemed to be used in Canada in association with those goods.
R.S., 1985, c. T-13, s. 4; 2014, c. 32, ss. 53, 54(F).
Filing a Section 45 Request
Anyone may file a section 45 request with the Registrar of Trademarks in Canada. David Michaels files section 45 requests for clients who wish to remain anonymous. Clients may hire separate counsel to represent David Michaels before the Trademarks Opposition Board or the Federal Court of Canada if there is an appeal.
Why file a Section 45 Request?
Sometimes a registered trademark is not being used in connection with some or any of the goods and services listed in the registration and the trademark is preventing someone from getting their trademark approved by a trademarks examiner. An easy response in such cases is to make a section 45 request to cancel (expunge) the cited trademark. If the trademark owner does not respond to the request, the trademark will be canceled in about 6 to 9 months.
And sometimes a trademark bully is asserting a set of trademarks registered for a number of goods and services when it is not actually using all of their trademarks with all of the goods and services covered. That is called trademark squatting and the bully deserves to lose its trademark registrations. Trademark bullies are sometimes called trademark trolls.
What does a trademark owner have to do to respond to a section 45 request?
Within 3 months of the date that the Registrar of Trademarks issued the section 45 notice, a trademark owner must file evidence showing use of the registered trademark,
“…with respect to each of the goods or services specified in the registration, whether the trademark was in use in Canada at any time during the three-year period immediately preceding the date of the notice…”
A registrant, or preferably its trademark agent, should take one of the following actions within the three-month time period, failing which its trademark registration may be expunged:
- File one or more affidavits or statutory declarations showing use of the registered trademark during the relevant period and send a copy to the requesting party; or
- Request an extension of time for the filing of evidence and pay the prescribed fee; the request must:
Form of evidence to file
See Evidence in Practice in Section 45 Proceedings.
Note the following:
- Evidence must be filed in the form of affidavits or statutory declarations;
- Evidence cannot be filed by fax;
- The evidence is not subject to cross-examination, so make it clear and unequivocal.
The exact nature of the evidence to be filed depends on the circumstances of the trademark registration and the goods and services covered. A registered trademark agent can assist you in determining what evidence is needed in order to put your best case forward.
The evidence must be filed with the TMOB and a copy sent to the requesting party within the set deadline. Extensions of time may be available.
Excusable Non-Use of a Registered Trademark
Trademarks are supposed to be registered only for the goods and services that the trademark owner is actually selling. Examples of excusable non-use of a registered trademark include:
- When a trademark owner needs extra time to re-launch a product after a recall or if there were regulatory changes;
- When products and services are seasonal or periodic, so the trademark wouldn’t normally be used continuously; and
- When a Superior Court issues an injunction against a trademark owner, to prevent a trademark owner from using its registered trademark, even though the Superior Courts do not have the jurisdiction issue such injunctions according to sections 19 and 57 of the Trade-marks Act, Revised Statutes of Canada.
Rights conferred by registration
19. Subject to sections 21, 32 and 67, the registration of a trade-mark in respect of any goods or services, unless shown to be invalid, gives to the owner of the trademark the exclusive right to the use throughout Canada of the trade-mark in respect of those goods or services.
- R.S., 1985, c. T-13, s. 19;
- 1993, c. 15, s. 60;
- 2014, c. 32, s. 53.
Exclusive jurisdiction of Federal Court
57 (1) The Federal Court has exclusive original jurisdiction, on the application of the Registrar or of any person interested, to order that any entry in the register be struck out or amended on the ground that at the date of the application the entry as it appears on the register does not accurately express or define the existing rights of the person appearing to be the registered owner of the mark.
In 2002, the Ontario Court of Appeal confirmed that the court does not have the jurisdiction to enjoin a registered trademark holder from using its valid and existing trademark registration in respect of those goods or services for which it is registered, in Molson Canada v. Oland Breweries Ltd., 2002 CanLII 44947 (ON CA), stating:
 My conclusion from this review of the case law is that the respondent is entitled to use its mark throughout Canada in association with its beer. If a competitor takes exception to that use, its sole recourse is to attack the validity of the registration. If it were otherwise, a plaintiff complaining of confusion caused by a competitor’s registered mark would himself be infringing on the mark by establishing that confusion. This follows from s. 20 of the Act, which provides that a registered mark is deemed infringed by a person who sells wares with a confusing trade-mark or trade name.
The standard stages in a section 45 proceeding in Canada are:
- Issuance of Section 45 Notice:
- anyone (the requesting party) may ask the Registrar of Trademarks (the Registrar) to issue a notice under s. 45 – a notice will generally be issued provided the prescribed fee is paid and the registration has been on the Register for more than three years and has not been the subject of a s. 45 decision during the preceding three years.
- Evidence Stage:
- the owner of a trademark registration (the registrant) files evidence in the form of affidavits or statutory declarations.
- Argument Stage:
- the requesting party is given an opportunity to file written representations concerning the adequacy of the registrant’s evidence;
- the registrant is given an opportunity to file written representations concerning the adequacy of its evidence;
- the registrant and the requesting party are each given an opportunity to make submissions at an oral hearing.
Once all of three stages are complete, the Registrar issues a written decision. A trademark owner may appeal this decision to the Federal Court of Canada.
Important cases in Section 45 proceedings in Canada
- Alliance Laundry Systems LLC v. Whirlpool Corporation LP, 2015 FCA 232
- It is still incumbent upon the respondent to show use, that is to say how, when and where the trade-mark has been used.
- The evidence did not, even on a generous view of its contents, meet the low threshold of evidence required to show use of the trademark at issue in association with the respondent’s goods.
- Bereskin & Parr v. Star-Kist Foods, Inc. (2004), 37 CPR (4th) 61 (TMOB)
- Boutiques Limité v Limco Investments(1998), 1998 CanLII 8416 (FCA)
- The evidence must show use during the relevant period.
- Canada (Registrar of Trade Marks) v. Cie internationale pour l’informatique CII Honeywell Bull, S.A. (1983), 77 CPR (2d) 101 (FC)
- C.R.A.C. Centre de Recherche et d’Analyses v. Imco Trading Co. (1993), 52 CPR (122) (TMOB)
- Molson Companies Ltd. v. John Labatt Ltd. et al. (1984), 1 CPR (3d) 329 (FCTD)
- Section 45 notices are valid even when they were not signed by the Registrar of Trademarks (but by a Trademarks Office employee acting on behalf of the Registrar).
- Molson Companies Ltd. v. Moosehead Breweries Ltd. (1990), 32 CPR (3d) 363 (FCTD)
- Nightingale Interloc Ltd. v. Prodesign Ltd. (1984), 2 CPR (3d) 535 (TMOB)
- Noxzema Chemical Co. of Canada Ltd. v. Sheran Manufacturing Ltd. et al (1968), 55 CPR 147 (Ex Ct)
- Section 45 proceedings are intended to be summary and administrative in nature.
- The purpose of such proceedings is to determine whether the trademark has been used in Canada during the prescribed period and, if not, reasons which justify its non-use.
- Section 45 proceedings do not contemplate abandonment.
- Parker-Knoll Ltd. v. Registrar of Trade Marks (1977), 32 CPR (2d) 148 (FC)
- Section 45 proceedings do not contemplate determining the loss of distinctiveness of a registered trademark.
- Plough Canada Ltd. v. Aerosol Fillers Inc., 45 CPR (2d) 194 (FCTD) and 53 CPR (2d) 62 (FCA)
- The use of the trademark must be more than in the trademark registrant’s general advertising. The use of the trademark must be in the trademark sense, as detailed in section 4 of the Trademarks Act
- Plough Canada Ltd. v. Aerosol Fillers Inc., 45 CPR (2d) (FCTD) and 53 C.P.R. (2d) 62 (FCA)
- A bald assertion of use is insufficient to support a claim to use of the trademark in Canada.
- Philip Morris Inc v. Imperial Tobacco Co of Canada, (1987) 13 CPR (3d) 289 (FCTD)
- Road Runner Trailer Mfg. Ltd. v. Road Runner Trailer Co. Ltd. (1984), 1 CPR (3d) 443 (FC)
- Saks & Co. v. Canada (Registrar of Trade Marks) (1989), 24 CPR (3d) 49 (FC)
- Sara Lee Corp. v. Intellectual Property Holding Co. (1997), 76 CPR (3d) 71 (TMOB)
- Société Nationale des Chemins de Fer Français SNCF v. Venice Simplon-OrientExpress (1995), 64 CPR (3d) 87 (TMOB)
- Xentel DM v. Office of the Commissioner of Baseball (2002), 23, CPR (4th) 570 (TMOB)