To remove a dead trademark from the Canadian Intellectual Property Office (CIPO) register under Section 45, the mark must have been registered for at least three years. You submit a request and pay a $400 CAD government fee, forcing the owner to prove they are still using it in Canada.
When launching a new business, finding the perfect brand name is an exciting milestone. However, discovering that someone else has already registered your desired name can bring your plans to a halt. In Canada, trademark law operates on a “use it or lose it” principle. If a company registers a mark but abandons it, they shouldn’t be allowed to hoard that name forever. 📍 This is where a Section 45 non-use cancellation comes into play. By utilizing this administrative process through the Canadian Intellectual Property Office (CIPO), you can legally clear “deadwood” from the trademark register.
Unlike complex and highly expensive federal lawsuits, a Section 45 proceeding is relatively straightforward. It is uniquely designed to force the registered owner to either prove they have used the trademark in Canada within the last three years or lose their registration entirely. If you are struggling with a blocked brand, consulting a local trademark lawyer from our directory can help you safely navigate this process without facing unexpected legal pitfalls.
Step-by-Step Process for Section 45 Cancellation in Canada
Whether your business is headquartered in a bustling market like Toronto, a tech hub in Vancouver, or a creative studio in Montreal, the process of challenging a trademark through CIPO is entirely federal. Generally, the process follows these structured steps to ensure fairness for both parties.
Step 1: Wait for the Three-Year Anniversary
Before you can initiate a Section 45 proceeding, the target trademark must have been officially registered for a minimum of three years. 📅 You cannot use this process against a newly registered mark or a pending application. Your lawyer will typically start by searching the CIPO database to verify the exact registration date and confirm eligibility.
Step 2: File the Request with CIPO
Once you confirm the trademark is past the three-year mark, you or your lawyer will submit a formal written request to the Registrar of Trademarks. You do not need to provide any evidence that the mark isn’t being used; the burden of proof rests entirely on the trademark owner. You simply submit the required forms and pay the official government fee.
Step 3: The Trademark Owner Submits Evidence
After receiving your request, CIPO will issue a notice to the trademark owner. The owner is then legally required to submit sworn affidavits or statutory declarations proving “use” of the mark in Canada. 🗂 This means they must provide real-world examples, such as sales invoices, marketing materials, or photographs of the product packaging in Canadian stores.
Step 4: Written Arguments and Final Decision
If the owner submits evidence, you will have the opportunity to review it and submit written arguments pointing out any flaws or lack of genuine use. Finally, the Trademarks Opposition Board (TMOB) will review the evidence and arguments. If the owner fails to prove use, or if they simply ignore the notice, CIPO will expunge (cancel) the trademark from the register, freeing it up for you to use.
| Feature | Section 45 (CIPO) | Section 18 (Federal Court) |
|---|---|---|
| Primary Ground | Non-use for 3 consecutive years. | Bad faith, lack of distinctiveness, or prior rights. |
| Burden of Proof | On the registered owner to prove use. | On the person filing the lawsuit. |
| Average Cost (CAD) | $2,500 – $6,000 | $20,000 – $50,000+ |
How Much Does a Section 45 Proceeding Cost?
While clearing a trademark is an investment, it is significantly cheaper than a full Federal Court lawsuit. Your expenses will be a mix of government fees and professional legal services.
- CIPO Filing Fee: The official government fee to request a Section 45 notice is currently $400 CAD.
- Lawyer Fees (Initial Filing): Having a lawyer evaluate the register and file the request typically costs between $500 and $1,500 CAD.
- Lawyer Fees (Review and Arguments): If the owner fights back and submits evidence, having your lawyer draft written arguments can cost an additional $2,000 to $5,000 CAD.
How Long Does the Process Take?
The timeline heavily depends on whether the registered owner decides to defend their trademark. If the owner ignores the CIPO notice, the trademark can be expunged in roughly 6 to 8 months. ⏳ However, if the owner submits evidence and both sides file written arguments, the entire Trademarks Opposition Board process can take anywhere from 18 to 24 months before a final decision is rendered.
Frequently Asked Questions (FAQ)
Do I have to prove the trademark is dead?
No. Under Canadian law, the burden of proof is strictly on the registered owner. You only need to pay the fee and request the notice; they must provide the evidence of use.
What counts as “use” of a trademark in Canada?
For goods, “use” generally means the trademark was displayed on the product or its packaging at the time it was sold and transferred in Canada. For services, it means the services were offered and performed in Canada under that trademark.
Can I remain anonymous during this process?
Yes. A Section 45 request can be filed by a law firm or a trademark agent on your behalf without disclosing your identity to the trademark owner or the public.
What happens if the owner proves they used the mark?
If the Trademarks Opposition Board determines the evidence shows sufficient use in Canada during the relevant three-year period, the trademark registration will be maintained, and you will not be able to register it yourself.
Do I need a lawyer to file a Section 45 notice?
While not strictly mandatory, using a local trademark lawyer is highly recommended. Legal professionals know how to dissect the owner’s evidence and draft compelling legal arguments that the average business owner might miss.
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