In Canada, a Section 45 expungement proceeding typically takes between 12 and 24 months to complete. This legal tool allows you to cancel a registered trademark that has not been used in Canada for three consecutive years, clearing the “deadwood” so you can register your own brand.
Imagine you have designed the perfect brand name for your new business in Toronto, only to discover during a search that a similar name is already registered with the Canadian Intellectual Property Office (CIPO). However, a closer look reveals that the registered company seemingly went out of business years ago, and the trademark is just sitting there, unused.
You do not have to abandon your branding dreams. Under Section 45 of the Canadian Trademarks Act, you can request that CIPO expunge (cancel) a trademark if the owner cannot prove they have used it in Canada during the preceding three years. 📝 This process is an incredibly powerful strategy for clearing administrative hurdles, but it requires strict adherence to legal timelines. This guide will walk you through the Section 45 procedure and help you understand how long you will have to wait to clear your desired trademark.
Step-by-Step Process in Canada for a Section 45 Expungement
Section 45 proceedings are handled federally by the Trademarks Opposition Board (TMOB), meaning the process is identical whether you reside in British Columbia, Ontario, or Nova Scotia. It is highly advisable to use a registered trademark agent, as the evidentiary standards for “use” in Canada are complex.
Step 1: The Three-Year Audit and Request
Before initiating the process, you must ensure the target trademark has been registered in Canada for at least three full years. 📅 You cannot launch a Section 45 proceeding against a newly registered mark. Once confirmed, your trademark lawyer will submit a formal written request and pay the government fee to CIPO, asking the Registrar to issue a Section 45 Notice to the registered owner.
Step 2: The Notice is Issued to the Owner
CIPO will review the request and formally mail a Section 45 Notice to the owner of the trademark (or their registered representative in Canada). 📬 This notice acts as a strict legal demand: the owner must furnish evidence showing they have sold goods or provided services under the trademark in Canada within the last three years, or provide special circumstances excusing their non-use.
Step 3: The Owner Furnishes Evidence (3 Months)
By law, the registered owner has three months from the date of the notice to respond with sworn affidavits or statutory declarations detailing their sales, advertising, and use in Canada. If the owner fails to respond, the trademark will be cancelled. If they do respond, the process moves to written arguments.
Step 4: Submitting Written Representations
If the trademark owner does submit evidence, both parties are then given the opportunity to file written arguments (representations). 💻 The requesting party (you) gets to file first, arguing that the owner’s evidence is insufficient, perhaps because it only shows token sales or internal use. The trademark owner then files their counter-arguments. Each side typically has two months to prepare these documents.
Step 5: The Oral Hearing (Optional)
After written arguments are submitted, either party can request an oral hearing before a Hearing Officer at the Trademarks Opposition Board. 🗣 These hearings are frequently conducted via video conference, saving travel costs for businesses outside the capital region. If a hearing is requested, it can easily add 3 to 6 months to your timeline as you wait for an available date.
Step 6: The Final Decision
Once all evidence, arguments, and hearings are concluded, the TMOB will reserve its decision. 🤝 It can take several months for the Hearing Officer to write and release the final judgment. If the officer decides the evidence of use was insufficient, the trademark is expunged, allowing your own trademark application to proceed smoothly.
How Much Does it Cost in Canada?
A Section 45 proceeding is a summary procedure, meaning it is much cheaper and faster than a full trademark lawsuit in Federal Court. 💰 Here is a breakdown of the typical costs you might face:
- CIPO Filing Fee: The government fee to initiate a Section 45 request is $595.06 CAD.
- Trademark Agent Fees (Initiation): Having a lawyer review the registry and file the initial request usually costs between $500 and $1,000 CAD.
- If the Owner Fails to Respond: If the owner defaults, your total costs will likely remain under $1,500 CAD, making this a highly cost-effective clearance strategy.
- If the Proceeding is Contested: If the owner fights back and you must draft written representations and attend an oral hearing, your total legal fees can range from $4,000 to $8,000 CAD.
How Long Does the Process Take?
The timeline is heavily dependent on whether the trademark owner chooses to defend their registration. 🕙 If the owner ignores the notice, the trademark can be expunged in about 4 to 6 months. However, if the owner submits evidence, requests extensions of time (which CIPO frequently grants), and requests an oral hearing, a contested Section 45 proceeding will routinely take 18 to 24 months from the initial request to the final written decision.
| Phase of Proceeding | Standard Timeline | Potential Delays |
|---|---|---|
| Issuance of Section 45 Notice | 1 – 2 months | CIPO administrative processing backlogs. |
| Owner Submits Evidence | 3 months | Owner can request retroactive extensions of time. |
| Written Representations | 2 months per side | Extensions requested by trademark lawyers. |
| Final TMOB Decision | 3 – 6 months post-hearing | Volume of pending cases at the TMOB. |
Frequently Asked Questions (FAQ)
Can I cross-examine the trademark owner on their evidence?
No. A unique feature of a Section 45 proceeding in Canada is that there is no right to cross-examination or discovery. The case is decided entirely on the face of the affidavit evidence submitted by the registered owner.
What if the owner proves they used the mark, but only slightly?
Under Canadian law, a single commercial transaction in the normal course of trade during the three-year period can sometimes be enough to maintain the registration. However, token sales explicitly manufactured just to save the trademark are usually rejected by CIPO.
Can the TMOB decision be appealed?
Yes. If either party is unhappy with the final decision of the Trademarks Opposition Board, they have the right to appeal the decision to the Federal Court of Canada, though this significantly increases the cost and time involved.
Do I need to prove I am using a similar mark to file a Section 45?
No. Any person or business can request a Section 45 notice against a registered trademark. You do not need to prove you have a competing interest or a pending trademark application of your own to initiate the process.
Leave a Reply