Cancelling a Trademark in Canada is a procedure that starts in the CIPO trademark office and usually does not involve any court proceeding unless there is an appeal. To cancel a trademark, you need to start a section 45 proceeding. The trademark owner must file evidence showing
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.
Buy our Trademark Cancellation service to anonymously file a section 45 request against a Canadian registered trademark. If the registered trademark holder fails to respond within the 90-day period specified by the Registrar of Trademarks, the trademark will be canceled by default.
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).
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.
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.
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:
See Evidence in Practice in Section 45 Proceedings.
Note the following:
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.
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:
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.
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.
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.