How to Expunge Registered Trademarks in Canada

The Trademarks Act provides two main avenues for trademarks to be expunged (i.e., removed) from the Register of Trademarks: summary cancellation (section 45) proceedings and expungement (section 57) proceedings. The former is more expedient but limited only to situations in which the registered owner is no longer using its mark; the latter allows marks to be expunged on a wider variety of grounds, including that the mark was not registrable in the first place or was registered in bad faith. Either may be appropriate where another party has registered a mark identical or similar to a mark that you are currently using or would like to use.

Summary cancellation for non-use (section 45 proceedings)

Section 45 of the Trademarks Act governs summary cancellation proceedings, often referred to simply as “section 45 proceedings”. Either by request of any person who pays a prescribed fee or by the Registrar’s own initiative, the Registrar may give notice to a registered trademark holder that they are requested to provide, within three months, evidence that the mark was used in Canada at any time during the three-year period immediately preceding the date of the notice. In the absence of evidence demonstrating use or excusable non-use, a registered owner’s mark is liable to be struck from the Register or amended accordingly. A mark may be amended to remove from the registration any goods or services in association with which it has not been used in the past three years. Section 45 proceedings can only be initiated once three years have elapsed from the date of registration of the trademark. In other words, the registrant is given three years to start using the mark (use is no longer a requirement for registration in Canada).

The purpose of section 45 is to provide an expedient means of clearing the Register of marks that are no longer in use – the summary nature of section 45 proceedings is reflected in the following:

• the burden is on the registered owner to demonstrate use;
• the registered owner’s evidence must be by way of affidavit or statutory declaration;
• the evidentiary standard that a registered owner must meet is generally low; and
• the requesting party does not have the opportunity to cross-examine the registered owner’s affiant/declarant or file its own evidence.

What constitutes “use”?

Use in section 45 proceedings is determined by reference to sections 2 and 4 of the Trademarks Act: to be used in association with goods, a trademark must, at the time of property transfer and in the normal course of trade, be marked on the goods themselves or on the packaging containing the goods. To be used in association with services, a trademark must be used or displayed in the performance or advertising of those services. In the context of a section 45 proceeding, a registration will be maintained only in association with those goods or services for which the registered owner can demonstrate use of the mark.

As noted above, the evidentiary standard is low – evidence of a single sale in the applicable three-year period may be sufficient to demonstrate use and maintain registration. Although registered owners are required to demonstrate use for each good and service specified in the notice, evidence relating to a single product or service may suffice to maintain registration in association with multiple listed goods or services. Finally, evidence that demonstrates use in association with services secondary, ancillary or incidental to those registered may be sufficient to maintain registration. For example, evidence demonstrating use of a mark in association with reservation or payment services may be sufficient to maintain a registration for use in association with “hotel services”.

In the absence of use in the applicable three-year period, a registered owner may maintain its registration if its non-use is a result of “special circumstances”, i.e., those not found in most cases of non-use of a mark. The primary consideration is whether the absence of use is a result of the special circumstances which then excuse that non-use. The Federal Courts and Registrar have also considered the following when assessing special circumstances put forward by a registered owner: (1) the length of time during which the trademark has not been in use, (2) whether the owner's reasons for not using its mark were due to circumstances beyond its control, and (3) whether the owner seriously intends to shortly resume use.

Procedure

Section 45 proceedings are commenced upon notice from the Registrar, either at the request of any person or of the Registrar’s own volition. The registered owner then has three months to furnish evidence of use. After the registered owner has filed its evidence, the requesting party may file written representations if it chooses to do so. The registered owner may then file written representations. Each party has two months to file written representations. Barring exceptional circumstances, the two month period cannot be extended. Finally, both parties are provided an opportunity to make representations at an oral hearing. The oral hearing is optional. The Registrar will then issue a written decision.

Decisions of the Registrar under section 45 may be appealed to the Federal Court. If new, material evidence is adduced on appeal, then the Court will apply a standard of review of correctness on issues to which new evidence relates – that is, the Court will reach its own determination on those issues. If there is no new, material evidence adduced on appeal, then the Court will apply a correctness standard on questions of law and the highly deferential standard of palpable and overriding error for questions of fact or mixed fact and law.

Please note that a section 45 proceeding may take between two to four years. Once a section 45 proceeding has been commenced, you may check the status of your proceeding by searching the Canadian Trademarks Database using the registration number of the relevant mark.

Expungement proceedings (section 57)

The Federal Court has broader jurisdiction to amend or expunge entries in the Register of Trademarks. Specifically, the Federal Court has exclusive jurisdiction under section 57 of the Trademarks Act to strike out or amend any entry on the Register on the ground that the entry as displayed does not accurately express or define the existing rights of the registered owner.

Section 57 proceedings may be commenced on the application of the Registrar or of “any person interested”. Such an application can be made (1) by filing an originating notice of motion, in which case the proceeding is heard and determined summarily on affidavit evidence (unless the court directs otherwise), (2) by counterclaim in a trademark infringement action, or (3) by statement of claim in an action claiming additional relief under the Trademarks Act. (For further discussion of different types of proceedings, please see our article on intellectual property disputes.)

“[A]ny person interested” includes anyone who is affected or reasonably apprehends being affected by a register entry or by any act or omission or contemplated act or omission under or contrary to the Trademarks Act. Plainly, a "person interested" must demonstrate a reasonable apprehension that its commercial interest, current or contemplated, might be affected. The threshold for being considered a person interested is low.

Grounds for expungement

Section 18 of the Trademarks Act sets out five grounds on which a trademark registration may be invalid.

1. The trademark was not registrable at the date of registration

Section 12 of the Trademarks Act lists circumstances under which trademarks are not registrable. Accordingly, expungement proceedings based on non-registrability may be based on any of the following section 12 requirements, among others:

• the trademark is primarily merely the name or surname of an individual who is living or has died within the preceding thirty years;
• the trademark is clearly descriptive or deceptively misdescriptive of the character or quality, place of origin, or the conditions of or persons employed in the production of the goods and services with which the mark is used (e.g., “ITALIAN GROCERY” used in association with the sale of imported Italian grocery goods);
• the trademark is the name in any language of any of the goods or services with which the mark is used (e.g., “LODY” (“ice cream” in Polish) used in association with ice cream);
• the trademark is confusing with a registered trademark; or
• the trademark consists of or so nearly resembles as to be likely to be mistaken for an official mark.

2. The trademark is not distinctive at the time the proceedings are brought

Expungement proceedings may be commenced on the ground that, at the date proceedings were commenced, the trademark is not distinctive. Distinctiveness refers to the ability of a trademark to function as an indicator of source, i.e., its ability to distinguish the registered owner’s goods and services from those of others.

To be distinctive, a trademark must meet three conditions: (1) the mark and the goods or services must be associated, (2) the mark’s owner must use this association in manufacturing and selling its goods or services, and (3) this association must enable the mark’s owner to distinguish its goods or services from those of others.

While required for registrability, distinctiveness can be lost over time. For example, this may occur where third parties are using the mark in question and the registered owner has not taken action to enforce its rights.

3. The trademark has been abandoned

Expungement proceedings may be commenced on grounds that the registered owner has abandoned the trademark in issue. Abandonment has two requirements: (1) non-use of the mark in Canada, and (2) intent to abandon. An intent to abandon may be inferred, in the absence of other evidence, from a failure to use the mark for a long period of time.

4. The applicant for registration was not the person entitled to secure the registration

Expungement proceedings may also be based on grounds that the applicant was not the person entitled to secure the registration, which is in turn governed by section 16 of the Trademarks Act. If, at the earlier of the filing date or the date of first use in Canada, a registered trademark owner's trademark was confusing with

• a trademark that had been previously used in Canada or made known in Canada by any other person;
• a trademark for which an application for registration had been previously filed in Canada by any other person; or
• a trade name that had been previously used in Canada by any other person;

then the owner was not the person entitled to secure the registration.

The Trademarks Act limits the availability of expungement proceedings based on non-entitlement – only the person (or a successor-in-title of that person) who previously used the confusing trademark or trade name may seek expungement of a registered trademark on grounds of non-entitlement.

The party seeking expungement must establish that it had not abandoned its confusing trademark or trade name at the date of advertisement of the registered trademark owner’s application. In proceedings commenced more than five years after registration of the mark in issue, expungement based on non-entitlement is available only if the registered trademark owner adopted its mark in Canada with knowledge of the previous use or making known of the other party’s confusing trademark or trade name.

5. The application for registration was filed in bad faith

This is a new ground of invalidity added by amendments to the Trademarks Act in force as of June 17, 2019 – it may take some time before there are Federal Court decisions considering this ground. However, the Court has previously found trademark registrations invalid for fraudulent misrepresentations or material misstatements made during the application process, both of which were then considered “non-statutory” grounds of invalidity.

Which procedure should I choose?

Your choice of procedure will likely be dictated by the available grounds for expungement – where the registered owner has not used its mark in the past three years, summary cancellation will generally be the preferred choice. Nonetheless, for guidance on selecting and pursuing the optimal procedure, please contact us for a complimentary and confidential initial telephone appointment.