Frequently Asked Questions (FAQ) About Administrative Non-Use Trademark Cancellation Proceedings in Canada
Q. Is it possible to cancel a trademark for non-use in Canada other than before a Court of law? If so, under which circumstances?
A. Yes, it is possible to cancel a trademark for non-use in Canada by way of an administrative process, often called a section 45 proceeding because it is taken pursuant to section 45 of our Trademarks Act. Such cancellation proceedings are initiated by sending a written request to the Registrar to forward a section 45 notice to the trademark owner. This option is available provided that the trademark in question has been registered for at least three years.
Q. Is it possible to cancel an official mark which has been adopted and used by a public authority in Canada?
A. Yes, but not through a section 45 proceeding. Currently, an interested party can attempt to expunge an official mark from the register of trademarks by filing an application for judicial review to the Federal Court.
However, in the next year, an amendment to Canada's trademarks legislation will likely come into force that provides a new way to challenge official marks. Under this amendment, interested persons may ask the Registrar to issue a notice to the official mark's owner. This notice would require evidence that the owner is a public authority and still exists. If not, the official mark will be inactivated.
Q. Why is it important to cancel trademark registrations in Canada?
A. By enabling the expungement of unused trademarks, cancellation proceedings are meant to clear inactive trademarks from the register of trademarks. There is no formal requirement to prove use periodically or to secure a registration in Canada. Expunging unused marks allows other applicants to proceed with their own trademark registrations. It may also be a useful way to overcome registrations that are cited against your own application. For a trademark owner, the presence of a multitude of third party registrations with similar components may affect the distinctiveness of its mark in oppositions or litigation.
Q. Who can request the cancellation of a trademark for non-use in Canada?
A. Anyone, be they an individual or an entity, may request the cancellation of a trademark in Canada. This includes lawyers and trademark agents. In practice, this flexibility allows a party to initiate cancellation proceedings without revealing its identity.
Q. Is a power of attorney necessary to file a request for cancellation?
A. No, a power of attorney is not required. If the requesting party has a trademark agent, correspondence regarding the cancellation request will be sent to their agent.
Q. How long, overall, does a trademark cancellation proceeding last?
A. The duration of a cancellation proceeding depends on many factors. For instance, if the trademark owner does not submit evidence of use in response to a section 45 notice, the registration will be expunged in less than a year. In general, cancellation proceedings may last from two to four years depending on whether a hearing is requested.
Q. What is the cost of filing a cancellation request?
A. There are two components to costs. The first is the official fees. They vary from one year to another. The prescribed fee for filing a cancellation request is currently $555. The second component are professional fees.
Q. Can the Registrar summarily reject a request for cancellation?
A. Upon receiving a request, the Registrar generally sends a section 45 notice to the registered owner, provided that the requesting party has paid the prescribed fee in full and that the trademark in question has been registered for more than three years. In some circumstances, the Registrar may refuse to initiate an administrative cancellation proceeding if it determines that there are good reasons for such refusal.
This determination is made on a case by case basis. For example, the following may constitute good reasons for refusing to issue a section 45 notice: (1) another cancellation proceeding is pending or under appeal for the same trademark registration, (2) a section 45 notice has been issued within the last three years with respect to the same trademark registration, provided that this previous proceeding led to a final decision, or (3) in the Registrar's opinion, the cancellation request is frivolous or vexatious.
Q. To whom is the notice of an administrative cancellation proceeding sent?
A. Where the trademark registration lists a trademark agent, the section 45 notice is sent to this agent. Otherwise, the Registrar sends the section 45 notice to the registered owner at the address made of record. The firm that initiated a Madrid Protocol filing designating Canada will not receive a copy. Thus, trademark owners must make sure that their contact information listed on the register is up to date. A failure to do so may result in the registered trademark owner not receiving the notice, which may, in turn, lead to the expungement of the trademark.
Q. If I receive a notice that my trademark is the subject of a cancellation request, how can I maintain my registration?
A. The registered trademark owner must respond within three months of the date appearing on the section 45 notice. The response should ideally include evidence demonstrating that each of the goods or services associated with the trademark has been used in Canada in the three years preceding the date of the section 45 notice. In the alternative, it is also possible to file evidence that circumstances out of the control of the owner explain the absence of use.
Q. What kind of evidence of use must be filed to maintain my registration?
A. The registered owner must file evidence of use of the trademark in Canada in the last three years from the date of the notice in association with each good or service listed in the registration. The evidence takes the form of an affidavit or a statutory declaration from a person who has sufficient knowledge of the relevant facts. For example, where the registered trademark owner is a corporation, an affidavit or a statutory declaration may be signed by the corporation's president or CEO, or by another officer or employee responsible for overseeing intellectual property matters. Documents, photos, invoices, and other relevant materials should also be attached.
Q. As a licensor, is use of the trademark by a licensee sufficient to maintain my rights in the registration?
A. Under Canadian trademark law, use by a licensee is deemed to be use by the trademark owner provided that the owner controls the character or quality of the goods or services. If such control is present, the owner may respond to the notice by furnishing evidence of use of the trademark by the licensee. In such circumstances, the affidavit or statutory declaration should include a statement that the owner had control over the character or quality of the goods or services. It is not necessary to provide a copy of the licensing agreement.
Q. What qualifies as "use" of a trademark under Canadian trademark law?
A. For goods, use generally requires at least one sale of each good in Canada where the trademark appears on the good itself or on its packaging. Mere advertising of a good, without a sale, does not constitute use. What is more, the sale must have been in the registered owner's normal course of trade. For example, offering free of charge promotional items, such as clothing, has been held in the past not to constitute use.
For services, advertising is generally sufficient if it displays the trademark and if it occurs in Canada. Generally speaking, to satisfy the use requirement, a foreign entity offering services in Canada must provide a material benefit to consumers in Canada.
Q. Who has the burden of proof, and what is the burden of proof to prove use?
A. The registered owner bears the burden of proof, meaning that a failure to demonstrate use would generally result in the cancellation of the trademark registration. While the burden is not an onerous one, the registered trademark owner's evidence must nonetheless be sufficient to satisfy the use requirement discussed above. What is required is a prima facie case establishing use of the trademark.
Q. What is the deadline to file evidence of use with respect to my trademark?
A. The registered owner has a three-month deadline to furnish and serve evidence, beginning from the date of the section 45 notice. The Registrar will typically grant one benchmark extension of two months.
Further extensions of time are discretionary, and are determined on a case by case basis. The registered owner will have to demonstrate exceptional circumstances to justify a further extension of time past the benchmark. Such circumstances could include, for example, a recent change in the owner's trademark agent, an assignment of or amendment made to the registered trademark, or the owner's inability to meet the deadline despite acting diligently.
Q. If the deadline to file evidence of use is missed, is it possible to ask for a retroactive extension of time?
A. Yes. If the three-month deadline to furnish and service evidence has already passed, the registered owner may still submit a request to the Registrar for a retroactive extension of time. The request must set out sufficient facts detailing why the owner's failure to meet the deadline or apply for an extension of time prior to the deadline was not reasonably avoidable.
Retroactive extensions will not be granted with respect to a particular phase of the section 45 cancellation proceedings, if the proceedings have already progressed to the next phase. They will also not be granted after the Registrar has reached a final decision.
Q. Is it possible for the registered trademark owner to not furnish or serve any evidence at all?
A. The registered owner's failure to provide evidence will put the registration in serious jeopardy. Administrative non-use cancellation proceedings are decided on the basis of the evidence made of record.
If the registered owner does not furnish evidence to the Registrar, the registered trademark will be expunged by the Registrar. Likewise, if the registered owner does not serve its evidence on the requesting party, then the Registrar is not required to consider such evidence.
Q. Is it possible for the registered trademark owner to only furnish and service evidence for some goods and services, and not others?
A. Yes, it is possible. Assuming the evidence is sufficient to demonstrate use within the relevant period, those goods and services for which evidence is provided will be maintained. However, those goods and services for which no evidence is provided will be struck from the trademark registration, unless there are special circumstances excusing non-use and evidence of such circumstances is provided.
Q. Can the party requesting the cancellation of the registered trademark also submit evidence?
A. No. The requesting party cannot and is not entitled to submit evidence during the course of an administrative non-use cancellation proceeding. The Registrar will not receive any evidence other than the affidavit or statutory declaration of the registered owner of the trademark (and the exhibits attached thereto). Generally speaking, the Registrar will disregard evidence submitted by the requesting party.
Q. Can the requesting party cross-examine the person who submitted evidence on behalf of the registered trademark owner or otherwise obtain discovery?
A. No. In administrative non-use cancellation proceedings, the requesting party cannot cross examine a person submitting evidence. The requesting party must assess the submitted evidence as worded, without the possibility of obtaining further testimony or admissions via cross-examination. The requesting party may make submissions with regard to the submitted evidence in the form of written representations or at a hearing. There is also no discovery in these proceedings which are intended to be summary in nature.
Q. Are protective/confidentiality orders available?
A. Currently, the Registrar does not have the authority to issue confidentiality orders. As a general rule, all documents and information filed with the Registrar in a cancellation proceeding are available to the public.
However, in the next year an amendment to Canada's trademarks legislation will likely come into force that gives the Registrar the authority to issue such orders. The Registrar has held consultation and has put together a draft practice notice on confidentiality orders.
Parties who wish to keep evidence confidential will have to file a request prior to submitting the evidence. Requests will have to contain an explanation as to why the information should be treated as confidential, among other criteria.
Q. If I have not used my trademark in the three years prior to the notice, can I still maintain my trademark registration?
A. Yes, but only under exceptional circumstances.
The registered owner's affidavit or statutory declaration must indicate the date the trademark was last in use, and the reasons for the absence of use since that date.
If the Registrar is satisfied that there were special circumstances excusing the absence of use during the relevant period, the registration or the specific goods or services will not be expunged despite the lack of use.
To excuse non-use, the special circumstances in question must be unusual, uncommon, or exceptional. The Registrar will decide based on the length of time of non-use, whether the reasons for non-use were due to circumstances beyond the control of the owner, and whether there is a serious intention to resume use soon.
Q. Can a requesting party change their mind and unilaterally withdraw from a cancellation proceeding?
A. No. The consent of the registered owner is required to discontinue a section 45 cancellation proceeding. Notwithstanding the requesting party's desire to withdraw from a cancellation proceeding, the Registrar's practice is that the proceeding will continue unless the registered trademark owner consents to a discontinuance. Without consent from both parties, the proceeding will continue such that the Registrar renders a decision.
Q. Is a cooling off period available to negotiate settlements?
A. No. For section 45 cancellation proceedings, there is no predetermined or benchmark period to extend deadlines in order to provide the parties with the additional time to negotiate the potential settlement.
While the Registrar can grant extensions of time under exceptional circumstances, and such circumstances include inability to meet deadlines despite acting diligently, delay in preparing for an upcoming deadline merely due to settlement negotiations will not be considered diligent action by the Registrar.
The Registrar currently has no authority to stay section 45 proceedings, even if the parties are pursuing settlement. The Registrar will not hold decisions in abeyance or agree not to issue a decision based on consent of the parties, or due to settlement negotiations.
Q. Does the Registrar require written representations in a cancellation proceeding?
A. No. Written representations are optional.
The parties may submit written representations after the registered owner has furnished evidence. If a party wishes to submit written representations, it must also serve such representations on the other party.
The Registrar will send a notice inviting parties to provide written representations. The requesting party has two months from the date of the notice to submit and serve written representations. After that, the registered owner then has two months to do the same, from either the date the requesting party served its evidence, or the expiry date of the requesting party's corresponding previous deadline.
If a party chooses not to submit any, that party can still plead orally. Any party seeking to plead orally must request a hearing. It is generally advisable to file written representations in a cancellation proceeding.
Q. Are hearings held to adjudicate cancellation proceedings?
A. Hearings may be held to adjudicate cancellation proceedings, but only if a request for hearing was duly and timely filed.
Q. Are hearings in cancellation proceedings held in person?
A. Videoconference is the preferred method for conducting hearings, and all hearings are therefore automatically scheduled by videoconference. A hearing in person may be requested, but it will be authorized only on an exceptional basis.
Q. How much time does it take to obtain a hearing date in a cancellation proceeding?
A. It can take approximately fifteen months from the date of receipt of a request for hearing by the Registrar to obtain a hearing date.
Q. What is the duration of a hearing in a cancellation proceeding?
A. A hearing is by default scheduled for two and a half hours. A party wishing to have a hearing longer than two and a half hours must specify it in its request for hearing along with the reasons justifying a longer hearing.
Q. Are witnesses allowed to testify during the hearing in a cancellation proceeding?
A. No, there is no witness testimony allowed during the hearing. The only evidence before the Hearing Officer is the Registrant's evidence filed by way of affidavit.
Q. 31. In what language are cancellation hearings conducted?
A. Cancellation hearings may be held in either French or English, or both. The request for hearing must specify whether a party will be making representations in French or English. Simultaneous interpretation is available, and if needed, it must be specified in the request for hearing.
Q. How much time does it take to obtain a decision from the Registrar ?
A. It can take approximately four months after the hearing date to obtain a decision from the Registrar.
Q. Is it possible to appeal a decision of the Registrar in a cancellation proceeding?
A. Yes, the decision of the Registrar may be appealed to the Federal Court within two months from the date on which notice of the decision was dispatched by the Registrar.
Q. Is it possible to file new evidence on appeal of a decision of the Registrar in a cancellation proceeding?
A. Currently, it is possible to file new evidence on appeal without requesting permission from the Federal Court. However, an amendment to Canada's trademarks legislation will likely come into force soon that will require parties to obtain permission from the Federal Court before filing new evidence.
Q. What standard does the Federal Court apply in the context of an appeal of a decision in a cancellation proceeding?
A. The applicable standard of review is generally the appellate standard of review, being the standard of palpable and overriding error for questions of mixed fact and law, and the standard of correctness for pure questions of law.
The standard of review may however be different if new evidence is filed. When new evidence is filed, the Court must first determine whether it is material, meaning that the evidence is sufficiently substantial, significant and probative that it would have a material effect on the Registrar's decision.
If the conclusion is that the new evidence is material, then the Court must review on a correctness standard the portion of the Registrar's decision to which the new evidence applies.
Q. Are decisions of the Registrar in cancellation proceedings published online?
A. Yes, they are all available online: https://decisions.opic-cipo.gc.ca/tmob-comc/decisions/en/nav_date.do.
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.