What is an Expungement Proceeding?

Section 45 of the Trade-marks Act is an expungement procedure intended to remove “deadwood” from the Register of trademarks. A trademark is considered “deadwood” if its registered owner is unable to furnish sufficient evidence of use of the trademark at any time during the relevant period immediately preceding the date of the Registrar’s notice or does not have sufficient excuse for non-use.

What are some of the key Proposed Changes?

I. Evidence of Use

The Registrar, on his or her own initiative, may request evidence of use of the trademark. Where a third party initiates the Section 45 proceeding, the registered owner will have to serve its evidence of use on the Registrar and the third party, where previously only service on the Registrar was required.

II. Written Representations

As is presently the case, the submission of written representations is optional. The time period within which written representations must be filed has been reduced from four-months to two-months.

III. Filing Evidence

Evidence can be filed electronically, where service will be deemed effective on the date of transmission.

IV. Service Requirements

Service in-person or by courier or registered mail will still be allowed, but will be restricted to Canada. If service by any of these methods is not possible, notifying the other party that the document has been filed with the Registrar is permitted. Any other manner of service, as agreed to by the parties, will still be permitted. In addition, once a proceeding has commenced, parties would be required to forward a copy of any correspondence to the other party.

V. Hearings

Parties will no longer receive a notice from the Registrar that they may request a hearing. Instead, all parties will have one-month to request a hearing on their own initiative.

What does this mean for Trademark Owners?

Trademark owners will likely experience an expedited expungement process, as a result of the introduction of electronic filing and a reduced timeline for filing written representations.

Need Help?
Contact our team at Parlee McLaws:

Elen L. Bereket – Edmonton Office – (780) 423 8501 – ebereket@parlee.com

Suzanne Sjovold – Calgary Office – (403) 294-7069 – ssjovold@parlee.com