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Intellectual Property

Section 45 Proceedings

By July 12, 2011No Comments

A trade-mark belonging to a client of mine was recently the subject of a section 45 proceeding.  Section 45 of the Trade-Marks Act entitles any interested party to apply to the Trade-Marks Office of Canada to request evidence of a trade-mark’s use within the preceding 3 year period.  If that evidence can not be provided by the owner of the trade-mark, the trade-mark will be “expunged” or struck from the register.

A trade-mark is valid for 15 years in Canada.  Section 45 of the Act is therefore useful in clearing out old trade-marks which are no longer in use, but its presence on the register for the 15 year period will prevent someone else from applying for a similar trade-mark.

An unfortunate element is this:  There are no costs awarded in front of the Trade-Marks Office Registrar.  In other words, if a party commences a section 45 proceeding against your trade-mark, all they pay is the filing fee.  You then have the burden of preparing evidence and filing an affidavit with the Registrar, while paying legal fees or trade-mark agent fees.  Depending on how difficult it is to prove the use of your trade-mark, you may be responsible for a large cost, which is not recoverable.

This tool is also used as an offensive weapon however, where a potential applicant wishes to contest the use of a trade-mark so that they can register their own.  This often happens in cases where a trade-mark owner may not display the trade-mark properly.  Recall that if the owner can not provide evidence that they have “used” the trade-mark – and used it in the proper sense, the trade-mark will be struck.  If your trade-mark is expunged, you retain common law rights in its use, but only for a geographical area, and if the opposing party had also applied for their own trade-mark corresponding to its section 45 challenge, they may be entitled to registration above and beyond your existing common law rights if they are able to prove prior use somewhere else in Canada.  You do have the option to oppose their application, but again, there are no costs recovered in that stage either!


The lesson here is ensure your trade-mark is in use, and used effectively and properly.  I can assist you in making sure that this is done so you can avoid higher costs in section 45 proceedings.  Contact me today for a trade-mark tune-up!




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