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Practice Notice
Section 45 Proceedings
Publication Date: 2005-12-21
This practice notice supersedes all practice notices previously
issued in respect of section 45 procedure. The provisions of this
practice notice are general guidelines only, are not binding in
any particular case, and are subject to change.
I. Correspondence
All correspondence in section 45 proceedings should (i) be
addressed to the Registrar of Trade-Marks, (ii) be clearly marked
"attention: section 45 proceedings," (iii) quote the name of the
trade-mark, its registration number and our Office file number,
(iv) indicate that a copy of the correspondence was sent to the
other party, and (v) deal with section 45 matters only.
II. The Issuance Stage
- Issuance when the trade-mark has been on the register for less
than three years: the Registrar will issue a section 45 Notice
against a registration that has been on the register for a period
of less than three years, if it is shown by way of affidavit or
statutory declaration that exceptional circumstances warrant
sending the Notice.
- Issuance where the registration has been amended to extend
the statement of wares or services: the Registrar will not issue
a section 45 notice against such additional wares or services
within three years of the date of registration of the amendment
unless it is shown by way of affidavit or statutory declaration
that exceptional circumstances warrant sending the notice.
- Issuance when the trade-mark has been on the register for
three years or more: upon receipt of a written request under
subsection 45(1) made after three years from the date of registration,
the Registrar will, unless he sees good reason to the contrary,
issue a section 45 notice to the registered owner, along with
a copy to the agent of record, if any, and will advise the
requesting party accordingly.
- Requests for the issuance of a section 45 notice under
paragraph (c) must be accompanied by the prescribed fee of
$400 (previously $150).
III. The Evidence Stage
- Failure to file evidence in response to a section 45 notice
will lead to the automatic decision to expunge the trade-mark registration
- All evidence furnished in response to a section 45 notice must
be in the form of an affidavit or statutory declaration.
- If the trade-mark is in use, use must be shown to have occurred
at anytime within the three-year period preceding the date of the
notice (previously "two-year period") and must be shown with
respect to each of the wares and services mentioned in the registration:
John Labatt v. Rainier Brewing Co. et al. (1984), 80 C.P.R.
(2d) 228 (F.C.A.); Plough Canada Ltd. v. Aerosol Fillers Inc.,
45 C.P.R. (2d) at 149 (F.C.T.D.) and 53 C.P.R.(2d) at 62 (F.C.A.).
However, based on Saks & Co. v. RTM et al. (1989), 24 C.P.R. (3d)
49 (F.C.T.D.), where the registration contains several categories
of wares or services and each category contains several items of
wares or several services, the Registrar may accept:
- a general statement of use of the mark within the relevant period
in relation to each item of wares and/or service listed in the registration
together with;
- a description of the use made of the trade-mark during the
relevant period in association with each item of wares and/or
service and examples of use in relation to a few items of wares
and/or services in each category.
- Use must be in compliance with section 4(1), section 4(2) or
section 4(3) of the Act.
- If the trade-mark was not in use at any time during the three
years preceding the date of the notice, the registrant is required
to show the date of last use and reasons for the absence of use
since such date. For consideration of special circumstances excusing
non-use see: RTM V. Harris Knitting Mills Ltd. (1985), 60 N.R. 380
(F.C.A.) and Lander Co. Canada Ltd. v. Alex MacRae & Co. (1992),
46 C.P.R. (3d) 417 (F.C.T.D.).
IV. The Hearing Stage
- The Registrar will generally invite the parties sequentially to
file written submissions pursuant to the provisions of subsection 45(2)
of the Act, and an administrative delay of two months will be provided
to each party for that purpose.
- Requests for an oral hearing must be filed within one month
following the final deadline for the submission of the registrant's
written submissions.
V. Extensions of Time
- All requests for extensions of time must contain reasons
explaining why the additional time is needed.
- Requests for extensions of time for filing evidence made
pursuant to subsection 47(1) must be accompanied by the prescribed
fee of $125 (previously $50).
- Requests for extensions of time for filing written submissions
and for requesting an oral hearing are mere administrative
extensions of time not relating to deadlines fixed by the Act
and do not require payment of a fee.
- The following standard extensions will be granted in respect
of a first request for an extension of time at a particular stage
of the proceedings:
- to file evidence: 3 months;
- to file written submissions: 3 months;
- to request an oral hearing: 1 month.
No requests for further extensions of time will be considered unless
the other party consents or exceptional circumstances are shown.
- No requests for a retroactive extension of time pursuant to
subsection 47(2) to file evidence will be granted unless accompanied
by the prescribed $125 fee (previously $50) and facts are set forth
to justify the conclusion that the failure to do the act or apply
for an extension within the time limit was not reasonably avoidable.
- Where a request for an extension of time other than a retroactive
extension of time is refused, the party will be given one final
month from the date of refusal to comply.
VI. Cross-examination
The Registrar has no authority to order cross-examination on an
affidavit or statutory declaration filed in section 45 proceedings:
Burke-Robertson and Carhartt Canada Ltd. v. RTM (1994), 56 C.P.R. (3d) 353.
VII. Rescindment
The Registrar may terminate the proceedings upon receipt of a request
to cancel the section 45 proceedings signed by or on behalf of both parties.
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