Since 1975, the Registrar has issued 12,675 expungement decisions in proceedings seeking summary cancellation (expungement) of registered Canadian trademarks on non-use grounds. 725 such proceedings are actively ongoing as of 22-Nov-2021, according to CIPO’s trademark .xml data.
A registered Canadian trademark may be summarily expunged pursuant to either section 441 or section 45 of the Trademarks Act R.S.C., 1985, c. T-13 (the TMA). Section 45 pertains to marks which have been registered for 3 or more years2. At the request of a third party—or on his or her own initiative3—the Registrar may require a registrant to submit evidence that a “...trademark was in use in Canada at any time during the [preceding 3 years] and, if not, the date when it was last so in use and the reason for the absence of such use since that date.”
The Federal Court of Canada has consistently resisted efforts to expand the summary nature of Section 45 proceedings: “The procedure under section 45 of the Act is meant to be simple, summary in nature, and expeditious. All that is required is that the trademark owner must establish a prima facie case of use in Canada within the relevant period...”4
According to CIPO’s trademark .xml data, the Registrar has issued 18,539 Section 45 notices since 1975. However, the pre-1996 data is sparse and may not reflect the full extent of Section 45 proceedings prior to 1996.
| 480 | Active | Section 45 notice sent to trademark owner. |
| 172 | Decided, Pending Appeal | Section 45 decision issued by the Registrar; case is in the period for which either party can file an appeal with the Federal Court. |
| 50 | Awaiting Decision | Section 45 case has finished all stages and is awaiting Registrar’s final decision. |
| 23 | Appeal In Progress | One of the parties has appealed the Registrar’s final decision to the Federal Court. |
| 725 |
A fully contested Section 45 proceeding progresses through multiple stages, as set forth in Appendix J “CIPO Expungement Stages” of CIPO’s Trademarks Data Dictionary—WIPO standard XML ST.96, Version 2.2. Appendix J lists 9 stages, but CIPO may create new stages to accommodate procedural changes. The following table groups the currently ongoing 725 Section 45 cases by their current stages, within each of the previously tabulated status groupings:
| 160 | Active | Response by Owner | All actions pertaining to the filing of a response to the section 45 notice. |
| 158 | Active | Oral Hearing – S. 45 | All actions pertaining to the scheduling and conducting of an oral hearing. |
| 97 | Active | Request Received | All actions pertaining to a request received and to the issuance of a section 45 notice. |
| 27 | Active | Arguments by Owner | All actions pertaining to the filing of the owner’s written submissions. |
| 23 | Active | Arguments by Requester | All actions pertaining to the filing of the requester’s written submissions. |
| 10 | Active | General Actions – S. 45 | General actions for a section 45 case. |
| 5 | Active | Decision – S. 45 | All actions pertaining to the issuance of the final decision of the Registrar. |
| 23 | Appeal In Progress | Appeal – S. 45 | All actions pertaining to the appeal of a final decision issued by the Registrar. |
| 47 | Awaiting Decision | Oral Hearing – S. 45 | All actions pertaining to the scheduling and conducting of an oral hearing. |
| 2 | Awaiting Decision | Arguments by Owner | All actions pertaining to the filing of the owner’s written submissions. |
| 1 | Awaiting Decision | General Actions – S. 45 | General actions for a section 45 case. |
| 166 | Decided, Pending Appeal | Decision – S. 45 | All actions pertaining to the issuance of the final decision of the Registrar. |
| 6 | Decided, Pending Appeal | Appeal – S. 45 | All actions pertaining to the appeal of a final decision issued by the Registrar. |
| 725 |
A Section 45 proceeding may result in one of 3 different decisions by the Registrar, set forth as follows in items 581, 582 & 583 of Data Dictionary Appendix I “CIPO Opposition and Expungement Actions”:
- Decision - Maintained: The trademark is maintained on the register.
- Decision - Expunged: The trademark is expunged from the register.
- Decision - Amend Goods/Services: The statement of goods/services for which the trademark is registered is amended.
As of 22-Nov-2021, CIPO’s trademark .xml data indicates that 14,691 decisions have been rendered since 1975 (again, the pre-1996 data is sparse):
| 932 | Maintained | Trademark maintained on the register. |
| 12,675 | Expunged | Trademark expunged from the register. |
| 1,084 | Amend Goods/Services | Amendment to the statement of goods/services for which the trademark is registered. |
| 14,691 |
The relatively high proportion (86%) of expungements is at least partially due to the fact that some Section 45 proceedings are uncontested, e.g. if the registrant has lost interest in the mark, is no longer in business, etc. The registration is expunged by default if the registrant does not contest the proceedings. As the Federal Court and the Trademarks Opposition Board have often observed, Section 45 proceedings serve to remove such “deadwood” from the register5.
Data Dictionary Appendix I “CIPO Opposition and Expungement Actions” lists 178 actions applicable to opposition or Section 45 proceedings, e.g. “Request Reviewed”, “Notice Sent to Owner”, “Evidence Filed by Owner”, “Arguments Requested from Requester”, “Oral Hearing Requested – Owner”, etc. etc. CIPO also creates new actions to accommodate procedural changes, some of which are necessitated by statutory or regulatory amendments. As of 22-Nov-2021, CIPO’s trademark .xml data references 58 actions that are not listed in Appendix I of the most recent version of the Data Dictionary, i.e. version 2.2 dated 22-May-2019.
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 See Section 44 Proceedings for a discussion of cancellation proceedings pursuant to TMA Section 44. ↩
2 No Madrid-based marks have undergone Section 45 proceedings yet, since as of 22-Nov-2021 no such marks had been registered in Canada for 3 or more years. (Canada began accepting Madrid-based applications on 17-Jun-2019.)↩
3 This post deals with Section 45 proceedings in general. Section 45 proceedings commenced by the Registrar “on his or her own initiative” will be covered in a future post.↩
4 per Pentney, J. at [41] in FFAUF S.A. v. Industria di Diseno Textil, S.A., 2020 FC 521 (CanLII) [citations omitted].↩
5 See for example Fasken Martineau Dumoulin LLP v GENTEC et al, 2021 TMOB 56 (CanLII) at [5].""↩
