Trademark Cancellation Proceedings under Section 45 in Canada

In Canada, trademark rights fundamentally depend on the trademark owner’s continued use of the mark. As written earlier, in this context, “use” has a special meaning: products must be marked with the trademark when the product is sold in the ordinary course of trade, or, for services, the mark must somehow be displayed when the services are performed.

For that reason, section 45 of Canada’s Trademark Act provides a simple procedure to have any trademark cancelled for non-use. (In the jargon, sometimes people use the term “expunged” instead of cancelled, but the terms mean the same thing.)

Section 45 can be used by anyone who thinks a trademark is no longer in use by its owner.

The procedure is quite simple:

• Anyone may apply in writing to the Registrar of Trade-marks to have any registered trademark cancelled. A filing fee applies, but it’s not that much.
• The trademark must have been registered for at least three years at the time the application is submitted.
• The Registrar has discretion to decide whether to notify the trademark owner. This is to prevent obviously silly applications.
• If the Registrar notifies the owner, the owner has three months to provide an affidavit or statutory declaration proving continued use at any point during the previous three years. Usually this is done by showing samples of the trademark in use and by providing supporting evidence of sales, such as invoices and shipping materials.
• The procedure is not a court hearing. The owner’s affidavit is the only evidence that the Registrar is authorized to receive. However, both the owner and the applicant can provide arguments in addition to the owner’s evidence.
• The test that the Registrar applies is simply one of use. The owner has no need to prove that the trademark distinguishes the goods or services being sold (which is a consideration during the trademark application process): United Grain Growers v. Lang Michener, 2001 FCA 66. If there has been any use at all within the previous three years, the owner will succeed.
• If there hasn’t been use, the Registrar will order that the trademark be cancelled. This doesn’t mean that the trademark owner must stop using the mark, simply that the mark has lost its registered status. Of course, if the mark is still important to the owner’s business, the owner should probably re-apply to obtain registration.
• The Registrar’s decision may be appealed by an unsuccessful participant.

For the applicant, the beauty of the procedure is that once the application and filing fee have been submitted, there’s no need to do anything else. The Registrar takes care of everything.