|
 Changes
to Section 45 Expungement Proceedings
Jennifer Dove
The Canadian Intellectual Property Office
(CIPO)
has
announced that the Trademarks Opposition Board will be
changing its practice in Section 45 expungement proceedings.
The changes are outlined in a new practice notice that will
take effect
on September 14, 2009 (see
http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr01944.html).
Section 45 of the Trade-marks Act provides for the
summary expungement of registered trademarks that are no
longer in use. Any party, upon payment of the prescribed fee,
may request that the Registrar issue a Notice under Section 45
requesting that the owner of a registered trademark submit
evidence that the mark has been used within the three years
immediately preceding the date of the Notice. If the mark
owner fails to establish that it has used the mark within the
relevant period, and is unable to demonstrate the existence of
special circumstances excusing non-use, the registered
trademark will be expunged. Section 45 Notices will generally
not be issued for marks that have been registered for less
than three years.
The
CIPO has indicated that the upcoming changes are meant to
better reflect the legislative intent that Section 45
proceedings be expedient and summary in nature. Accordingly,
the new practice notice includes several changes intended to
streamline the process. The most significant changes are as
follows:
Limits on extensions of time to file evidence
Currently, a standard extension of time of three months beyond
the initial three month deadline is generally available for
the Registrant to file evidence, with further extensions
available on consent or if exceptional circumstances are
shown.
Under the new practice, Registrants will be granted a single
extension of time of up to four months. No further extensions
will generally be granted unless the Registrar determines that
circumstances justify the further extension.
The
CIPO has
explicitly stated that neither consent nor the fact that the
parties are pursuing settlement negotiations will justify the
granting of a further extension of time.
In addition, Registrants will not be granted retroactive
extensions of time for filing additional evidence after the
requesting party has filed its written submissions.
Increased
time to file written submissions and elimination of extensions
for written submissions
Under the current practice, parties are given two months to
submit written submissions. A standard extension of three
months is generally available, with further extensions
available on consent or if exceptional circumstances are
shown.
Once the new practice notice comes into effect, parties will
be given four months to file written submissions, and no
extensions of time will be available.
Limits on rescheduling hearings
Under the new practice, parties will not be permitted to
postpone scheduled hearings on the basis of consent or
settlement negotiations. Cases may be rescheduled once
if the party or parties who had requested to be heard are not
available and the parties consent to having the hearing
rescheduled.
What does all of
this mean for mark owners?
Given the limited time available to respond to Section 45
Notices, mark owners need to be prepared to defend their
registrations if need be. This means maintaining good records
of use, informing Trademark Agents of any address or ownership
changes, and ensuring that use of the mark by anyone other
than the mark owner is addressed by proper license
agreements. Further, parties interested in settling
trademark disputes that relate to Section 45 proceedings need
to be conscious of the restricted timelines.
Other recent changes
This practice notice is on the heels of several other recent
changes in Trademarks Office practice, including:
-
the extension of deadlines to submit Office
Action responses from four months to six months
-
the discontinuance of “courtesy letters” to applicants
informing them of co-pending and confusing applications with a
later filing date or priority filing date
-
streamlined opposition proceedings including limits on
extensions of time and introduction of the 9 month "cooling
off period" available to each party, on consent, to pursue
settlement in the early stages of the proceedings.
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