Section 45 proceedings initiated by the Registrar on his or her own initiative are rare and many be unfamiliar to some current practitioners2. CIPO’s trademark .xml data reveals only 30 Registrar-initiated Section 45 cases amongst the 1,832,646 marks (both active and inactive) on the Canadian trademark register as of 06-Dec-20213. Only 4 of those 30 registrations remain active. 2 of the inactive registrations were cancelled by their owners. The remaining 24 have been expunged—18 as a direct result of a Registrar-initiated Section 45 proceeding. The other 6 expunged registrations survived Registrar-initiated Section 45 proceedings but were eventually expunged for non-renewal.
The 30 aforementioned cases were initiated by the Registrar via Section 45 notices mailed between 1989 and 2011.
If a Registrar-initiated Section 45 case results in expungement of the registration, then in addition to the “S45...Initiated by Registrar” notation, the online database displays the registration’s “expunged” status (see for example TMA323029).
The online database Action History for TMA323029 includes details of a Section 45 case initiated by a third party. However, that case did not result in expungement of TMA323029—the expungement was due to a separate Registrar-initiated Section 45 case. The details of that Registrar-initiated case do not appear in CIPO’s online database entry for TMA323029, however they do appear in CIPO’s trademark .xml data file for the registration, which is 540243-00.xml (recall that CIPO’s file naming convention uses the application serial numbers). That file contains these details (click to enlarge the image):
Registrar-initiated Section 45 cases are akin to “merged” extension applications4 in that, if the case results in amendment to the registration’s goods / services description then the amendment details appear in the online database “Recordals (known also as Footnotes)” section. For example, the online database displays the entry below for TMA493503 (click to enlarge the image). [CIPO’s trademark .xml data file for TMA493503, namely 0825043-00.xml, dates the “Decision - Amend Goods/Services” entry 18-Apr-2001, but as seen below, it took over 2 years (until 22-Oct-2003) to amend the registration.]
Why would the Registrar initiate a Section 45 proceeding on his or her own initiative? One possible answer is suggested by inspecting the details of each Registrar-initiated case in relation to other events involving the same registration. Such inspection reveals that in 16 of the 30 Registrar-initiated cases, the notice initiating the Registrar-initiated proceeding was dispatched simultaneously with a notification of the Registrar’s decision to maintain the same registration in an earlier Section 45 proceeding initiated by a third party. For example, CIPO’s trademark .xml data file for TMA435356 (namely 730765-00.xml) contains the details shown below for a third party initiated Section 45 proceeding (Case #1) and a Registrar-initiated Section 45 proceeding (Case #2). The aforementioned simultaneous entries are highlighted (click to enlarge the image):
1 TMA Section 45(1) is currently restricted to marks which have been registered for at least 3 years, but prior to the amendments which took effect 17-Jun-2019, Section 45 enabled the Registrar to initiate the proceedings on his or her own initiative at any time.↩
2 For some discussion of the topic, see Section IV “Initiating The Procedure” in Summary Expungement of Registered Trade Marks on the Ground of Non-Use, David Vaver, Osgoode Hall Law Journal, 1983, Vol. 21, No. 1, pp. 17-54.↩
3 CIPO’s trademark data does not include marks that were cancelled or expunged prior to 1979. Details of Section 45 proceedings pertaining to such marks won’t be found in the data.↩
4 See Extension Applications.↩
5 See CIPO Addresses the Backlog and CIPO’s examination backlog—the Madrid effect.↩
