Section 44 of the Trademarks Act R.S.C., 1985, c. T-13 (the TMA) pertains to “...any trademark that was on the register on July 1, 1954...”.
The objective of Section 44 is to bring the goods / services descriptions of older registrations1 into conformity with the description requirements set forth in the TMA2. Failure to comply with a Section 44 request can result in expungement of the registration.
Current practitioners may be unfamiliar with Section 44 proceedings—which are rare. However practitioners will note the similarity to recently enacted TMA Section 44.1, pursuant to which the Registrar may require the owner of any registration to group its goods / services into their respective Nice classifications. Failure to comply with a Section 44.1 requirement can also result in expungement of the registration.
Older registrations which may have been subjected to Section 44 proceedings are now also subject to the requirements of Section 44.1. See TMDA51355 and UCA19582 for examples of older registrations with recent “Requirement To Furnish Statement Under Subsection 44.1(1) Sent” Action History entries.
As mentioned, Section 44 cases are rare. That is unsurprising, since interested parties have had almost 7 decades to avail themselves of the Section 44 mechanism. Also, recall that CIPO’s trademark data does not include marks that were cancelled or expunged prior to 19793, so details of Section 44 proceedings pertaining to such marks won’t be found in the data. Moreover, there are relatively few currently active registrations that were “on the register on July 1, 1954”. Specifically, of the 1,827,805 (both active and inactive) marks on the Canadian trademark register as of 15-Nov-2021:
- 1,827 are currently active registrations granted under the Trade Mark and Design Act, (1868) 31 Vict., c. 55;
- 3,678 are currently active registrations granted under the Unfair Competition Act (1932) 22-23 George V, c. 38; and
- 1 is a currently active registration granted under the pre-Confederation Act pertaining to Trade Marks.
CIPO’s trademark .xml data reveals only 5 Section 44 cases
4 amongst those 1,827,805 marks. All 5 of these cases are closed—the most recent case was closed in 2004. Only 3 of the 5 registrations are currently active; the other 2 have been expunged as discussed below.
Unlike Section 45 cases or opposition cases, details of closed Section 44 cases do not appear in the Action History displayed via CIPO’s online trademark database. Closed Section 44 cases are akin to “merged” extension applications5 in that the online database displays the case result in the “Recordals (known also as Footnotes)” section. For example, the online database displays the following entry for TMDA49765 (click to enlarge the image):
If a Section 44 case does not result in a change to the registration's goods / services description then no annotation appears via the online database. For example, although CIPO’s trademark .xml data reveals that
TMDA42506 underwent Section 44 proceedings between 12-Oct-2001 and 18-Apr-2002, no Section 44 annotation appears the online database entry for TMDA42506. Nevertheless, CIPO’s trademark .xml file for TMDA42506 reveals the following Section 44 events:
The online database Action History for TMDA42506 includes a 14-Aug-2002 “Expunged - Failure To Provide Information” entry likely made pursuant to TMA s. 44(3) which provides “Where the information required by subsection (1) is not furnished, the Registrar shall by a further notice fix a reasonable time after which, if the information is not furnished, he may expunge the registration of the trademark.” However, the online database entry for TMDA42506 makes no explicit reference to Section 44.
CIPO’s trademark .xml data also reveals that
UCA49742 underwent Section 44 proceedings, but again the online database makes no mention of Section 44 in relation to UCA 49742. CIPO’s trademark .xml file for UCA49742 reveals the following events—none of which appear in the online database Action History:
The 18-Mar-2005 “Correspondence Created” entry is interesting, given that UCA49742 was expunged some five years earlier—apparently for non-renewal—not pursuant to TMA s. 44(3). The 18-Mar-2005 correspondence might pertain to the appeal referenced in the 06-May-1983 entry tabulated above, but one would have to inspect CIPO’s file for UCA49742 (application no. 0225405-00) to verify that.
Although CIPO’s online database entry for UCA49742 makes no mention of Section 44 proceedings, the database indicates that UCA49742 underwent Section 45 proceedings, as highlighted in the extract below:
Conceivably, CIPO’s .xml data file for UCA49742 (i.e. 225405-00.xml) incorrectly indicates that the registration underwent Section 44 proceedings, rather than Section 45 proceedings. On the one hand, the .xml file’s <catmk:OppositionCaseTypeDescription> element states “Section 44 Case” as shown and highlighted below (click to enlarge the image):
On the other hand, the same .xml file refers to Section 45 in relation to the same proceeding, e.g. as shown and highlighted below (click to enlarge the image):
Overall, the case type, its proceeding stages and their associated events appear as follows in CIPO’s .xml data file for UCA49742:
The “Proceeding #” column contains “1” in every row, meaning that every row references the same proceeding. And yet we see a mixture of references to Sections 44 and 45 (compare the Case Type and Proceeding Stage columns). Conceivably, the .xml file’s Proceeding Stage descriptions incorrectly reference Section 45 whereas the Case Type description correctly references Section 44, or vice versa. Again, one would have to inspect CIPO’s file for UCA49742 (application no. 0225405-00) to determine the correct interpretation.
You might wonder if there are any instances in which CIPO’s .xml data unambiguously indicates that a registration underwent
both Section 44 and Section 45 proceedings. The answer is yes. See for example
TMDA49765 in which:
- the “Recordals (known also as Footnotes)” section states “Pursuant to Section 44 of the Trade-marks Act, the register is hereby amended so the statement of wares now reads....”; and
- the Action History section provides details of “Expungement Actions (Section 45)”.
Have a question about Canadian trademarks that might be answerable by reference to CIPO’s data? Send me an email—I’ll try to look into it and let you know (subject to these Terms & Conditions).
1 i.e. marks registered under the Trade Mark and Design Act, (1868) 31 Vict., c. 55 (the TMDA) or the Unfair Competition Act (1932) 22-23 George V, c. 38 (the UCA).↩
2 For a detailed discussion, see Trade Mark Expungement under Canadian Law, Philip Thomas Mitches, McGill Law Journal, 1969, Vol. 15, No. 3, pp. 362-435.↩
3 See section 2.1.1 of CIPO’s Trademarks Data Dictionary—WIPO standard XML ST.96, Version 2.2 dated 22-May-2019.↩
4 See TMDA42506, TMDA49765, TMDA21246, UCA3873 and UCA49742.↩
5 See Extension Applications.↩
