Consultation on changes to Canadian trade-mark summary cancellation practice

The Canadian Trade-marks Office has announced a consultation on changes to summary cancellation procedures. The deadline to comment on the proposed changes is March 13, 2009.

Summary cancellation procedures are colloquially called “Section 45 proceedings”, since they are initiated under Section 45 of Canada’s Trade-mark Act.  They can be initiated by anyone, and are thus often brought for strategic reasons.

Highlights of the changes include:

  • The owner of the trade-mark registration targeted by the section 45 proceeding can apply for one 4 month extension of time to file its evidence of use. The extension will be granted only if sufficient reasons are provided. The proposed Practice Notice does not provide guidance on what constitutes sufficient reasons. Further extensions to file evidence will not be granted unless the Registrar of Trade-marks (the “Registrar”) considers that there are circumstances justifying a further extension of time. While the proposed Practice Notice provides guidance as to what those circumstances are, the Practice Notice specifically states that settlement negotiations are not one of those circumstances. Currently, extensions to file the owner’s evidence due to settlement negotiations are routinely granted.
  • The Registrar can decide whether to maintain, amend or expunge the trade-mark registration on the trade-mark owner’s evidence alone, without requesting written arguments from either party and holding an oral hearing. Under the current Practice Notice, parties have the right to file written arguments and request an oral hearing.
  • If the Registrar does request written arguments from the parties, no extension of time to file those written arguments will be granted, even if the parties are in settlement negotiations.  Currently, a 3 month extension of time is available.
  • The party requesting that Section 45 proceedings be initiated cannot request the proceedings’ termination. The Registrar will always issue an decision in Section 45 proceedings, even if both parties to the proceeding – the person requesting the proceedings and the trade-mark registration owner – want the proceeding stopped.  Currently, section 45 proceedings can be terminated with both parties’ written consent.

The proposed Practice Notice does not state whether it will retroactively apply to Section 45 proceedings commenced before the proposed Practice Notice takes effect.

Many of the significant changes in the proposed Practice Notice create obstacles in bringing Section 45 proceedings for strategic reasons.  Indeed, the Trade-marks Office advises throughout the proposed Practice Notice that it views Section 45 proceedings as a mechanism to serve the public interest by  removing unused trade-mark registrations from Canada’s trade-mark registry, not inter partes proceedings.

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  1. […] Changes to Canadian trade-mark summary expungement proceedings starting September 14 Canada’s Trade-mark Office (TMO) has announced a new Practice Notice governing trade-mark summary expungement proceedings (a.k.a. section 45 proceedings) effective September 14, 2009. The changes follow a government consultation previously reported on this blog here. […]



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