Responding to a Section 45 Notice: A Practical Guide for Registered Owners

Canada does not require use of a trademark before registration, but an unused registration is vulnerable. Section 45 of the Trademarks Act gives anyone a quick, inexpensive way to challenge it three years after registration.

How section 45 works

After three years from the day a trademark is registered, the Trademarks Office will, at the written request of any person who pays the prescribed fee, give notice to the registered owner requiring it to furnish within three months an affidavit or statutory declaration showing whether the trademark was in use in Canada at any time during the three-year period immediately preceding the date of the notice.

The requesting party does not need to show any interest in the mark, and the process is administrative, handled by the Trademarks Opposition Board.

What the evidence must show

According to CIPO's practice notice, the evidence must show use of the trademark by the registered owner or an assignee, or licensed use under section 50 of the Act, and the use must comply with section 4 of the Act and be shown for each of the goods and services listed in the registration or specified in the notice.

That last point catches many owners out. A registration covering twenty goods, supported by sales of only three, is likely to be cut back to those three.

If the mark wasn't used

Non-use isn't always fatal. For the registration not to be expunged, the Registrar must be satisfied that the owner's evidence demonstrates "special circumstances" excusing the absence of use to maintain the registration. Special circumstances are assessed strictly, and the owner should explain when the mark was last used, why use stopped, and what steps are being taken to resume use.

Checklist for trademark registrants:

• Diarize the three-month evidence deadline as soon as the notice arrives, and ask your Canadian agent early whether an extension is available.

• Gather invoices showing sales to Canadian customers for each registered good or service during the relevant period.

• Show the mark on the goods or packaging, with representative photographs.

• If a subsidiary or distributor uses the mark, be ready to show a licence and the owner's control over the character and quality of the goods.

• Consider whether to defend every item. Conceding unused goods can keep the focus on the goods that matter.