CIPO Announces Consultation to Change Section 45 Proceedings
The Canadian Intellectual Property Office ("CIPO") is presently seeking input regarding proposed changes to Section 45 Proceedings (i.e. Canada's "use it or lose it" provision of the Trade-marks Act (the "Act")).
Currently, Section 45 of the Act provides a summary procedure whereby a party may request that the Registrar of Trademarks issue a Section 45 Notice requiring that the registered owner of a trademark submit, within three months, evidence of use of the mark for the three year period preceding the notice or evidence of special circumstances to excuse non-use. If no special circumstances or evidence are filed or where such evidence is deficient, the registration may be amended or cancelled in its entirety.
Included within the suggested changes are:
- proposals to permit the requesting party to seek a Section 45 Notice in respect of specific products and/or services rather than the entirety of those products and services listed in the registration;
- proposed circumstances whereby the Registrar may elect not issue a Section 45 Notice which include: (a) where the registration is currently the subject of a pending Section 45 proceeding; (b) where the Registrar determines that the request is merely frivolous or vexatious; and (c) where the request is made within three years from the date of a previous Section 45 decision;
- restrictions to the number of extensions of time available to a registrant for the submission of evidence (i.e. limited to one extension of four months) while clarifying the circumstances which may justify an extension of time;
- a proposal whereby the Registrar could simply elect to render a decision to cancel, amend or maintain a registration where the evidence "clearly" establishes or fails to establish use of the mark; and lastly,
- it appears that requesting parties will no longer have the ability to withdraw the Section 45 request and thereby terminate the proceedings in circumstances where the parties are in negotiation.
The consultation period regarding the proposals ends on March 13, 2009 and thus any interested parties are encouraged to submit comment. We will provide a subsequent post once feedback is published by the Trademarks Office.
