New practice notice on Section 45 proceedings issued

The Canadian Intellectual Property Office (CIPO) has issued a practice notice announcing that starting September 14 2009, the Trademarks Opposition Board will be changing its practice for administrative expungement proceedings, known as Section 45 proceedings.

Under Section 45 of the Trademarks Act, the registrar may, "at any time", give notice to the owner of a registered trademark requiring the latter to provide evidence that the mark has been used in Canada during the three-year period immediately preceding the notice or, if the mark has not been used during this period, the last date on which it was used and the reason(s) excusing non-use since that date.

This notice is usually given further to the written request of an interested party, unless the registrar sees good reason to refuse issuance of the notice. Even though such determination is made on a case-by-case basis, the new practice notice now indicates expressly that the registrar may consider the following circumstances as good reasons not to issue a notice:
  • the trademark is already the subject of proceedings;
  • the interested party has filed its request within three years of the date of issuance of a previous Section 45 notice; or 
  • the request is frivolous or vexatious.
Furthermore, to ensure compliance with Article 19 of the Agreement on Trade-Related Aspects of Intellectual Property Rights, the registrar will refrain from issuing a Section 45 notice on his or her own motion if the trademark at issue has been registered for less than three years.

When the new practice notice comes into effect, the registrar:
  • will generally grant only one extension of time (up to four months) for the registered owner to file its evidence of use;
  • will not grant requests to extend the new administrative deadline of four months to file written representations (which was previously of two months); and
  • will generally not grant requests for retroactive extensions of time to file additional evidence after the requesting party has filed its written representations.
The fact that parties are negotiating a settlement or that they both consent to an extension of time will no longer suffice to obtain it.

The circumstances that could nevertheless justify additional extensions of time include:
  • a very recent change in the party's instructing principal or trademark agent;
  • illness, accident, death, bankruptcy or other serious and unforeseen circumstances; and
  • assignment or cancellation of the registration or amendment to the statement of goods or services.
In addition, where a hearing was requested and the parties consented to having the hearing rescheduled, the registrar will generally accept to reschedule it only once. These changes pertaining to extensions of time and scheduling aim to reflect the fact that Section 45 proceedings should be an expedient statutory mechanism.

Lastly, in determining whether the evidence filed may provide sufficient reasons to justify the absence of use, the registrar, based on previous decisions from the Federal Court of Appeal, will now consider all three of the following criteria: 

  • the length of time during which the trademark has not been used;
  • whether the reasons for the absence of use were due to circumstances beyond the control of the owner; and
  • whether there exists a serious intention to resume use of the trademark.
The new practice notice will replace the notice dated December 21 2005.

Practice notices aim to provide guidance on the practice and interpretation of the act by CIPO. If any inconsistency between the notice and the legislation is found, the legislation must be followed.

Marcel Naud, Léger Robic Richard LLP, Montreal

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