Trademarks can be cancelled after registration
A Canadian trademark registration (ie. an application that has already been approved and registered) can be cancelled after registration for two reasons-
- improper registration
Cancellation for Non-Use.
At any time after the third anniversary of registration, a Canadian trademark registration may be cancelled by the registrar if the registrant cannot provide evidence of use of the trademark within the last 3 years.
These cancellation for non-use proceedings are called ‘section 45 proceedings‘ after the relevant provision in the Trademarks Act. Ir ia nor uncommon for s. 45 proceedings to take several years to resolve.
S. 45 proceedings to remove a trademark from the register are administrative (and thus in theory not adversarial) in nature and are conducted internally to the Office of the Registrar of Trademarks:
- A requesting party (not the trademark owner) files a requisition with the Registrar requesting that the Registrar serve a s. 45 notice on the owner of the registered trademark
- (the “S. 45 Notice“)
- Usually (but not always), the Registrar will serve a S. 45 Notice on the owner of the registered trademark;
- Within 3 months of receipt of the S. 45 Notice the trademark owner must serve on the requesting party and file with the Registrar, proof of use of the trademark.
Service on the trademark owner. It is very important for owners of registered trademarks to receive S. 45 Notices. Accordingly, it is important for trademark owners to ensure that their on the register for each their registrations is accurate. Best practice is to appoint a Canadian trademark agent to receive correspondence.
Anonymous requests. Often, the requesting party has come upon the trademark either when doing searches or the registration is cited by an examiner against a pending application. In order to preserve the anonimity of the party interested in having the trademark removed from the register, non-use proceedings are usually initiated in the name of a law firm. A common scenario is that the requesting party believes that the registration is ‘over broad’ in that it covers goods or services not sold by the owner of the registered mark, and these unnecessarily wide claims are the basis of potential confusion with the requesting parties’ proposed trademark.
Fee. The requesting party must pay the prescribed fee. The fees change often. See our page on government fees for the latest.
No evidence from the requesting party. No evidence can by filed by the requesting party. The requesting party cannot ‘prove’ non-use by the owner of the mark.
Deadlines. The deadline for the owner to respond to the S. 45 Notice is 3 months. This deadline can be extended by 4 months on request and payment of the required fee. Further extensions of time for responding are possible but on a case by case basis. Failure to respond in time will result in the registration being cancelled.
Evidence. The owner of the registered trademark is obliged to submit evidence of use of the trademark – otherwise, the trademark will be cancelled and removed from the register. Evidence must be submitted in accordance with the deadlines and rules and prove use in accordance with requisite standard of proof. Evidence must be by properly sworn affidavit or statutory declaration. The evidence must address each and every good or service associated with the registration. A bare statement that ‘the mark is used’ will not suffice. Evidence must be demonstrative (‘show don’t tell’). For goods, the required evidence is usually in the form of bills of lading, invoices and the like. For services, it is invoices or marketing/advertising materials.
Confidentiality. Evidence is on the public record so care must be taken not to disclose confidential information.
Use requirement. The evidence filed by the owner must establish use of the trademark for each ‘good’ or ‘service’ claimed in the registration during the 3 years prior to the Registrar’s Notice. Use does not have to be ‘continuous’ during this period, or ‘substantial’. Use can be sporadic and of small value – a single use during the past 3 years will suffice.
No cross-examinations. There are no cross-examinations on affidavits in s. 45 proceedings.
Written submissions by requesting party. The requesting party may make written submissions. It is common to make such submissions when the requesting party believes that there is weak or inadequate evidence of use of the mark (on some or all bases of registration).
Written submissions by the owner. The owner may make written submissions, usually within 2 months of the requesting party submitting submissions or waiving the right to make submissions.
Oral hearings. A party can request an oral hearing. A party that does not request an oral hearing will not be heard. If neither party requests an oral hearing the s. 45 proceeding will be dealt with entire in writing.
Outcomes. The possible outcomes include:
- the entire registration is maintained,
- the entire registration is cancelled, or
- the registration is maintained for some goods or services and cancelled for others (for which the owner failed to provide evidence of use).
Representation for owners. Because of the serious potential consequences, the technical requirements of the rules of evidence and the nature of proof of ‘use’ of the trademark, owners of registered trademarks are usually represented by Canadian trademark agents when they respond to a s. 45 non-use proceeding.
Subsequent applications. Often, cancellation of all or part of a registration using S. 45 proceedings will allow the requesting party to proceed with their application. Note, however, that even a s. 45 cancellation does not prevent the owner from re-applying for registration.
Cancellation for Improper Registration.
A registered Canadian trademark may be cancelled and removed from the register (technically called “expunged”) if, at the time of registration, the trademark was not registrable or the applicant was not the person entitled to apply to register it. These proceedings are adversarial in nature. The litigation must be conducted in the Federal Court of Canada which is the sole court with jurisdiction to order an amendment to the Register of Trade-Marks.
An example of these proceedings would be if the mark lacked distinctiveness at the time of application, and thus was not registrable at all.