Upcoming Changes to Section 45 Proceedings
The Canadian Trade-marks Opposition Board ("TMOB") has issued a Practice Notice announcing changes to Section 45 Proceedings which will be made effective September 14, 2009.
The Section 45 process is initiated at the request of any person seeking evidence that a mark which has been registered for at least three years, has indeed been used by or on behalf of the Registrant. The process is intended to be a simple and expeditious process requiring that a Registrant submit, within three months of receipt of the Section 45 Notice, evidence of use of the trademark (or special circumstances excusing non-use) within the three (3) year period preceding the notice. Underlying this process is a motivation to clear "dead wood" from the Register to remove those marks which are not "in use" by Registrants. Nevertheless, over time the section 45 process has been less efficient for a variety of reasons including, for example, the unwillingness of unhurried non-using Registrant's to acknowledge a lack of evidence, successive requests for extensions of time to submit evidence, written arguments, etc. Accordingly, the TMOB has sought to increase the efficiency of the process with the current announcement, which includes:
- limiting the number of extensions of time available to Registrants to one extension of up to four months;
- disallowing retroactive extensions of time to submit additional evidence after the Requesting Party has filed written submissions;
- increasing the time line for submitting written argument to four months from the current two, with no extensions of time available; and
- providing additional certainty for the scheduling and re-scheduling of oral hearings
Additionally, the TMOB has clarified policies concerning both the Registrar's discretion to issue a Section 45 Notice and guidance with respect to those exceptional circumstances which may excuse a Registrant's non-use of the trademark.
