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.

The most significant changes  concern reductions in or eliminations of extensions for specific steps in s. 45 proceedings. Those changes follow a similar trend in Canadian opposition practice over the past few years.

Currently, it is possible for the owner of the targeted trade-mark registration to get an initial three (3) month extension of time to file evidence of use upon payment of a government fee, followed by additional three (3) month extensions of time with the requesting party’s consent and upon payment of a government fee. Often, the requesting party will agree to further extensions if the parties are in settlement negotiations.

Under the new Practice Notice, the trade-mark owner can obtain only one four (4) month extension of time to file it s evidence, provided the extension request is accompanied by the requisite government fee and sufficient reasons as to why an extension of time is required. The Practice Notice is silent as to what constitutes “sufficient reasons.” Further extensions of time are unavailable unless the Registrar considers that there are circumstances justifying a further extension (e.g. illness, accident, death or bankruptcy). The TMO will not grant a further extension based on the requesting party’s consent or the parties’ settlement negotiations.

Along the same line, the new Practice Notice eliminates extensions of time for the filing of both the trade-mark owner’s and the requesting party’s written representations.

Another significant change is the TMO will generally not postpone section 45 hearings once scheduled – the Registrar will issue a decision regarding the section 45 proceeding even if the parties no longer wish to be heard.  The Practice Notice indicates that section 45 proceedings may still be discontinued upon receipt of a written request signed by one or both parties requesting the proceeding’s termination. However, the TMO is not obliged to grant the termination request.  This means that if the parties  to a section 45 proceeding want to discontinue the proceeding once a hearing has been scheduled, they should do so immediately in an effort to avoid a decision.

It appears that the TMO’s rationale behind the changes is that section 45 proceedings are designed to clear the Canadian trade-mark register of unused marks and that section 45 proceedings are not a tool for deciding other issues such as distinctiveness.  It remains to be seen whether the new Practice Notice will eliminate section 45 proceedings brought for strategic reasons related to other trade-mark disputes, such as oppositions and infringement actions.

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