On July 7, 2009, the Canadian Intellectual Property Office
(CIPO) issued a new Practice Notice for section 45 (summary
cancellation) proceedings, which will come into effect on September
14, 2009. Summary cancellation proceedings are intended to clear
the Trade-marks Register of "dead wood": that is,
trademarks that are no longer being used by their owners. The
Practice Notice emphasizes that section 45 proceedings are not
intended to replace inter partes expungement proceedings
under section 57 of the Trade-marks Act, where issues such as
ownership, distinctiveness or abandonment of a registered trademark
may be raised before the Federal Court of Canada.
The issuance of the Practice Notice comes after CIPO reviewed and
took into account comments received after it published the draft
Practice Notice for section 45 proceedings on January 23, 2009 (the
Draft Practice Notice).
The Draft Practice Notice proposed a couple of controversial
changes, including a proposal that in certain limited situations, a
final decision in the proceeding may be made by the Registrar
immediately following the filing of evidence of use by the
registered owner, without inviting written or oral representations
from either the owner of the registered mark or the party who
requested the cancellation of the mark. In addition, the Draft
Practice Notice suggested that section 45 proceedings could not be
terminated once begun, even on consent of both parties, contrary to
Neither of these changes made it into the final version of the
Practice Notice, which sets out new maximum benchmarks for
timelines and extensions of time granted at the various stages of a
cancellation proceeding. A recurring theme in the Practice Notice
is the emphasis on the summary nature of cancellation proceedings
before the Registrar. These proceedings are intended to take place
relatively quickly, and to deal only with the question of whether
the mark has been used within the last three years before the
commencement of the section 45 proceedings.
The main changes to current timelines are as follows:
Filing evidence of use of a mark by the registered owner : the
maximum time available is seven months (a three-month initial
period plus the potential for one extension of four months). No
extensions will be permitted beyond these benchmarks, except under
exceptional circumstances. Of particular note is that exceptional
circumstances would not include the fact that the parties
are pursuing settlement negotiations.
Filing written representations: total time granted is four
months (a four-month initial period, with no extensions available),
a reduction of one month from the current practice (a two-month
initial period plus a three-month extension).
Requesting an oral hearing: total time granted is one month
from the final deadline for the filing of the written
representations of the registered owner, and no extensions of time
will be available. This is a reduction of one month from the
current practice (a one-month initial period plus a one-month
In addition, the Registrar will no longer permit oral hearings to
be postponed. CIPO has reported that since 2005, approximately
fifty per cent of scheduled oral hearings are consistently either
postponed or cancelled. The Practice Notice allows for hearings to
be rescheduled once, on consent, within one month of receiving the
scheduling notice, if a party will not be available on the original
date. No postponements will be granted after this, however, even on
the basis of consent between the parties and/or on the basis of
ongoing settlement negotiations.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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The Canadian Intellectual Property Office has issued a report entitled IP Canada Report 2016, discussing trends in IP use domestically, and by Canadians abroad, based on analysis of CIPO's internal data and those collected by the World Intellectual Property Organization.
The value of reliance on a trade-mark registration, as opposed to prior use, stands out sharply in the recent Federal Court of Appeal case of Pizzaiolo Restaurants Inc. v. Les Restaurants La Pizzaiolle Inc. ( 2016 FCA 256 October 28, 2016).
This is an appeal from the Federal Court's decision setting aside the Registrar of Trade-marks decision to the extent that it dismissed the applicant's opposition regarding the mark PIZZAIOLO and Design.
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