If you receive a Section 45 notice in Canada, you generally have exactly three months to file sworn evidence proving you have actively used your trademark in commerce during the past three years. Failure to submit this evidence to the Trademarks Opposition Board (TMOB) will automatically result in the expungement (cancellation) of your registration.
Protecting a brand is a cornerstone of operating a successful business, whether your headquarters is in Toronto, Mississauga, or Ottawa. In Canada, trademark registrations are federal, meaning they are governed by the Canadian Intellectual Property Office (CIPO) and the Trademarks Act. Once your trademark has been registered for three years, any third party can request a Section 45 proceeding. This is a formal administrative process designed to clear “deadwood” from the trademark register by challenging marks that are no longer actively used in the Canadian marketplace.
Receiving a Section 45 notice can be highly stressful for business owners. 📍 It is crucial to understand that this is not a lawsuit, but rather a request for proof. You are not required to prove that your brand is famous, only that you have genuinely used the trademark in Canada in association with the specific goods or services listed in your registration. Because the timeline is strict and the evidentiary requirements are highly technical, most businesses choose to hire a qualified Canadian trademark lawyer to navigate the proceedings and secure their intellectual property.
Step-by-Step Process for Defending a Section 45 Notice in Canada
Whether you operate a small retail shop in Hamilton or a massive tech enterprise across Ontario, the process for defending your trademark generally follows a strict federal pathway. Adhering to these steps meticulously is essential for maintaining your registered rights.
Step 1: Reviewing the CIPO Notice and Calculating Deadlines
The moment you receive the Section 45 notice from CIPO, the clock starts ticking. ⌛ The notice will clearly state that you have three months from the date of the letter to file your evidence. It is vital to calendar this date immediately. While limited extensions of time are sometimes available (usually requiring a $150 CAD federal government fee and a valid reason), you should never rely on them as a guarantee. Your law firm will typically review the notice to identify precisely which goods or services are being challenged, as a challenger can target your entire registration or just specific parts of it.
Step 2: Conducting an Internal Trademark Audit
Before drafting any legal documents, you must gather raw proof of your trademark’s use in Canada. You will need to look backwards exactly three years from the date the Section 45 notice was issued. For physical goods, valid evidence typically includes clear photographs of the product packaging, labels showing the trademark, and corresponding sales invoices sent to Canadian customers. For services, you might need copies of advertising materials, website screenshots showing the service being offered to Canadians, and commercial contracts or cheques proving that the service was actively performed and paid for within the country.
Step 3: Drafting the Sworn Affidavit of Use
Raw documents cannot simply be mailed to CIPO. 📝 The Trademarks Act requires that all evidence be submitted in the form of a sworn Affidavit or a Statutory Declaration. This legal document must be signed under oath in front of a notary public or a commissioner for taking affidavits in Ontario. The affidavit tells the story of your business operations, explaining exactly how the trademark was used in the normal course of trade. Your lawyer will attach your gathered invoices and photographs as “Exhibits” to this affidavit, ensuring they directly link the trademark to the goods and services listed in your federal registration.
Step 4: Filing Evidence with the Trademarks Opposition Board (TMOB)
Once the affidavit is signed, it must be officially filed with the Trademarks Opposition Board (TMOB), a specialized tribunal within CIPO. Filing is typically done electronically through the CIPO online portal. Unlike the initial application process, CIPO does not currently charge a government fee for the trademark owner to file their Section 45 evidence. However, failing to file anything by the deadline will result in a default judgment, and your trademark will be expunged from the federal registry without any further warnings.
Step 5: Submitting Written Representations
After your evidence is submitted, both you and the party who challenged your trademark will have an opportunity to submit Written Representations. 🗂 These are formal legal arguments summarizing why the evidence does or does not meet the legal standard of “use” under Canadian trademark law. The challenger will try to point out flaws in your invoices or argue that your packaging does not display the mark correctly. Your trademark lawyer will respond by citing relevant Canadian case law and defending the strength of your submitted exhibits.
Step 6: Attending the Oral Hearing (Optional)
If either party feels strongly about their case, they can request an oral hearing before a TMOB hearing officer. Hearings are now frequently conducted via video conference, allowing Ontario businesses to participate without travelling to CIPO headquarters in Gatineau, Quebec. During the hearing, lawyers for both sides present their arguments verbally. No new evidence can be introduced at this stage; the officer will only review the previously filed affidavit and written representations before reserving their final decision. If the final decision is appealed, any party wishing to introduce new evidence must seek leave (permission) from the Federal Court.
How Much Does it Cost to Defend a Trademark in Canada?
Understanding the financial implications of a Section 45 proceeding is essential for corporate budgeting. While CIPO’s direct government fees for defending the mark are minimal, the legal labour required to draft a compliant affidavit can be substantial. Additionally, under recent amendments to the Trademarks Act, the TMOB now has the authority to award costs against a party in certain circumstances, such as improper conduct or late cancellation of hearings.
| Expense Type | Estimated Cost (CAD) | Description |
|---|---|---|
| CIPO Evidence Filing Fee | $0 CAD | There is no federal government fee to submit your affidavit of use, though TMOB may award costs in cases of improper conduct. |
| CIPO Extension Fee | $150 CAD | Required only if you need to request an extension of time from the TMOB. |
| Lawyer Fees (Evidence Phase) | $2,000 – $4,500+ CAD | Legal fees for a trademark lawyer to review documents, draft the complex affidavit, and properly exhibit evidence. |
| Lawyer Fees (Argument Phase) | $1,500 – $3,500+ CAD | Drafting Written Representations to legally argue your case against the challenger. |
Keep in mind that these lawyer fees are estimates based on standard Ontario legal rates for 2026. 💰 If your business has a highly complex registration covering dozens of different products, it will naturally take your law firm more time to compile the evidence, which can increase the overall legal costs.
How Long Does the Process Take?
The timeline for a Section 45 proceeding is highly structured but can be quite lengthy due to administrative backlogs at the TMOB. Generally, the trademark owner has three months to compile and submit their initial evidence. If extensions are granted, this initial phase can stretch to five or six months.
Once all evidence and written representations are filed by both parties, the file is transferred to a hearing officer for a decision. 📅 In Canada, it currently takes anywhere from 12 to 24 months from the initiation of the Section 45 request to receive the final written decision from CIPO. If either party is unhappy with the TMOB’s decision, they have the right to appeal to the Federal Court of Canada, which would add an additional one to two years to the total timeline. Note that under Section 56(5) of the Trademarks Act, parties no longer have an automatic right to introduce new evidence on appeal; you must now obtain leave of the Federal Court to do so.
Frequently Asked Questions (FAQ)
What exactly constitutes “use” of a trademark in Canada?
Under Canadian law, “use” for goods generally means the trademark is displayed on the product itself or its packaging at the time the property in the goods transfers to a Canadian consumer in the normal course of trade. For services, “use” means the trademark is displayed in advertising or promotional materials, and the service is actively being performed for customers in Canada.
Can I rely on foreign sales to protect my Canadian trademark?
No. To maintain a Canadian trademark registration under Section 45, you must prove use of the mark specifically in Canada. Selling products exclusively in the United States or Europe will not protect your Canadian registration from being expunged, even if you are an internationally recognized brand.
What happens if I haven’t used the trademark due to special circumstances?
The Trademarks Act allows you to excuse non-use if it was caused by “special circumstances” outside of your control, such as a factory fire, extreme supply chain disruptions, or specific government regulatory delays. However, you must provide clear evidence of exactly when the use stopped, the specific reasons for the stoppage, and the concrete steps you are actively taking to resume use in Canada shortly.
Can a competitor use Section 45 to steal my brand name?
Yes, Section 45 is frequently used by competitors as a strategic tool. If a competitor wants to register a name that is confusingly similar to yours, and they notice you haven’t been actively selling products, they will initiate a Section 45 proceeding to wipe your registration off the federal database, clearing the path for their own trademark application.
Do I absolutely need to hire a lawyer for this process?
While the law does not strictly forbid you from self-representing, it is highly discouraged. Section 45 proceedings involve strict evidentiary rules. If an affidavit is drafted incorrectly or if exhibits are not formatted according to TMOB standards, the evidence may be entirely rejected, resulting in the automatic loss of your trademark rights.
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