The Trade-marks Opposition Board (the Board) has revised its
practices regarding summary proceedings for non-use of trademarks,
commonly referred to as "section 45 proceedings." These
proceedings are intended to act as an "expedient statutory
mechanism to clear the Register of trade-marks not in
use."1 Section 45 of the Trade-marks Act
permits third parties to request that the Registrar institute
proceedings to confirm that the owner used the trademark within the
three years preceding the date of the request.2 The
owner of the registered mark has three months from the date of
receipt of notice from the Registrar to submit evidence of use,
which can be done in the form of an affidavit or a declaration.
Failure to provide this notice will result in the mark being
The revised practices, which are scheduled to come into effect
on September 14, 2009, should improve the efficiency and speed with
which section 45 proceedings are handled. The revised notice,
Practice in Section 45 Proceedings,3 will
replace the existing practice notice.
The new practice notice will limit the number and length of
extensions. Trademark owners will generally be granted a
single extension of time to submit evidence of use, up to
a maximum of four months (in addition to the three
months from receipt of notice from the Registrar), forcing
trademark owners to act quickly to respond to all section 45
requests. In addition, trademark owners will no longer be granted
retroactive extensions of time to file additional evidence of use
after a requesting party has filed written representations relating
to non-use, thereby encouraging owners to respond to requests with
their best available evidence.
The new practice notice will increase the time granted to both
the requesting party and the trademark owner for filing written
submissions. Each party will now have four months to file their
written submissions, with no opportunity for time extensions.
Parties must therefore carefully monitor these deadlines.
The revised notice clarifies the circumstances in which the
Registrar may elect not to issue a section 45 notice. The
Registrar will consider whether (i) the trademark is already the
subject of a section 45 proceeding, either pending before the
Board or on appeal before the Federal Court; (ii) the request is
within three years of the date of issuance of a previous section 45
notice when a final decision was issued by the Registrar; and (iii)
the request is frivolous or vexatious.
The revised notice also provides guidance concerning the
exceptional circumstances under which non-use will be excused. The
Registrar will consider (i) the length of time during which the
trademark has not been used; (ii) whether the reasons for non-use
were due to circumstances beyond the control of the owner; and
(iii) whether the owner seriously intends to shortly resume using
the mark. If owners lack evidence of use, they might consider
whether they can submit evidence of exceptional circumstances to
excuse the non-use in response to a section 45 request.
Finally, the revised notice sets out an important change related
to the scheduling of hearings. Rescheduling will be permitted if
the parties who had requested the hearing will not available on the
scheduled date and provide consent for rescheduling. The hearing
will, however, generally be rescheduled only once, and subsequent
postponement will not be permitted.
A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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