Canada: Cancellation Proceedings Against A Registered Canadian Trademark: When Can "Special Circumstances" Justify Non-use?

Last Updated: August 17 2015
Article by Nelson Godfrey

As in most jurisdictions around the world, a registered trademark in Canada is vulnerable to cancellation if it is no longer in use. In Canada, three years after registration, any person may request that a "section 45" notice issue, requiring the owner to provide evidence of use in order to maintain the registration.

Under new legislation  that will likely come into force in 2017 (discussed in our March 31, 2014 IP Update), cancellation proceedings for non-use will become much more important. Since applicants will be able to obtain a registration without providing any information regarding use of a trademark, the ability to challenge a registration for non-use will be a valuable tool for those seeking to remedy situations where trademarks have been registered without any genuine use in the Canadian marketplace. At the same time, owners of registered trademarks will need to be aware of the requirements for proving use in the context of section 45 proceedings. Providing evidence of "special circumstances" justifying non-use is one option that can save a registered trademark from expungement.

The recent decision of the Federal Court of Canada in Gouverneur Inc v The One Group LLC ("Gouverneur"), 2015 FC 128, examined in detail the "special circumstances" that may justify non-use of a trademark in the context of a section 45 proceeding. Gouverneur concerned the trademark "STK", registered in 2008 in association with bar and restaurant services. At the request of Gouverneur, the Trademarks Office issued a section 45 notice to The One Group requiring proof of use of the STK trademark.

As no STK restaurant had ever been opened in Canada, The One Group sought to justify the absence of use by relying on business delays in expanding into Canada. For example, The One Group filed affidavit evidence that The One Group had conversations with a number of potential partners during the relevant period, in its attempts to secure an appropriate location to open a restaurant in Canada. These potential partners included the Gansevoort Hotel Group and the Thompson Hotel Group, both of whom had plans to open hotels in Toronto but ultimately both decided not to proceed with their Toronto-based projects. The One Group also filed an affidavit of the owner of the Gansevoort Hotel Group, who stated that he had discussions with The One Group in 2008 and that, if the Gansevoort Hotel Group project in Toronto had gone forward, he believed that an agreement with The One Group to open a restaurant would have been reached.

The test to establish "special circumstances" justifying non-use of a trademark requires an assessment of the reasons offered as explanation for non-use of the trademark. This includes a consideration of whether the circumstances are "special", in the sense that they are uncommon, unusual or exceptional, and a consideration of whether the circumstances justify non-use of the trademark. In Gouverneur, the Hearing Officer of the Trademarks Opposition Board found that The One Group had established circumstances that justified non-use of the STK trademark and maintained the registration. The Hearing Officer specifically found that the circumstances, including the cancelled hotel projects, were beyond the control of The One Group and constituted circumstances that were "unusual, uncommon and exceptional". Gouverneur appealed the Hearing Officer's decision to the Federal Court of Canada.

On appeal, Justice Bédard of the Federal Court reversed the decision of the Trademarks Office and cancelled the registration. In so doing, Justice Bédard noted that the question of whether "special circumstances" exist to justify non-use of a trademark entails a consideration of:

  1. the length of time the trademark has not been in use;
  2. whether there is a serious intention on the part of the registrant to shortly resume use; and, most importantly,
  3. whether the circumstances alleged to justify non-use were beyond the registrant's control.

Justice Bédard also found that the circumstances set out in the evidence filed by The One Group were not sufficient to justify non-use of the STK trademark. Justice Bédard found that there was no evidence that the discussions with the Gansevoort Hotel Group and the Thompson Hotel Group were close to an agreement prior to the cancellation of those projects and that, in any event, those discussions were likely finished by the end of 2009, the first year of the relevant period for proving use. The One Group also provided evidence that it had subsequent discussions with other potential partners, but Justice Bédard found that the evidence did not provide details of those conversations, including, critically, details of the reasons why they failed to produce results. Justice Bédard also found that the evidence of an intention to resume use of the STK trademark was vague and non-compelling.

Ultimately, Justice Bédard concluded that the evidence filed by The One Group could not reasonably support a finding that the non-use of the STK trademark during the relevant period was beyond its control, or that the circumstances evidenced were unusual, uncommon or exceptional. The Hearing Officer's decision was set aside, and the STK trademark was ordered expunged from the Register of Trademarks.

The decision in Gouverneur illustrates the limited circumstances in which non-use of a trademark may be justified for the purposes of section 45 proceedings. Gouverneur also illustrates the importance of carefully preparing evidence on behalf of trademark owners whose registrations are challenged in section 45 proceedings. If possible, affidavits filed on behalf of a trademarks owner in section 45 proceedings should include detailed and specific evidence relating to all of the owner's efforts to use the trademark throughout the relevant period, and details of the manner in which those circumstances were beyond the owner's control and were uncommon, unusual or exceptional in the context of the owner's business.

For further information, please contact a member of our firm's Trademark group.

The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Nelson Godfrey
In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.