On July 7, 2009, the Canadian Intellectual Property Office (CIPO) issued a new Practice Notice for section 45 (summary cancellation) proceedings, which will come into effect on September 14, 2009. Summary cancellation proceedings are intended to clear the Trade-marks Register of "dead wood": that is, trademarks that are no longer being used by their owners. The Practice Notice emphasizes that section 45 proceedings are not intended to replace inter partes expungement proceedings under section 57 of the Trade-marks Act, where issues such as ownership, distinctiveness or abandonment of a registered trademark may be raised before the Federal Court of Canada.
The issuance of the Practice Notice comes after CIPO reviewed and took into account comments received after it published the draft Practice Notice for section 45 proceedings on January 23, 2009 (the Draft Practice Notice).
The Draft Practice Notice proposed a couple of controversial changes, including a proposal that in certain limited situations, a final decision in the proceeding may be made by the Registrar immediately following the filing of evidence of use by the registered owner, without inviting written or oral representations from either the owner of the registered mark or the party who requested the cancellation of the mark. In addition, the Draft Practice Notice suggested that section 45 proceedings could not be terminated once begun, even on consent of both parties, contrary to current practice.
Neither of these changes made it into the final version of the Practice Notice, which sets out new maximum benchmarks for timelines and extensions of time granted at the various stages of a cancellation proceeding. A recurring theme in the Practice Notice is the emphasis on the summary nature of cancellation proceedings before the Registrar. These proceedings are intended to take place relatively quickly, and to deal only with the question of whether the mark has been used within the last three years before the commencement of the section 45 proceedings.
The main changes to current timelines are as follows:
- Filing evidence of use of a mark by the registered owner : the maximum time available is seven months (a three-month initial period plus the potential for one extension of four months). No extensions will be permitted beyond these benchmarks, except under exceptional circumstances. Of particular note is that exceptional circumstances would not include the fact that the parties are pursuing settlement negotiations.
- Filing written representations: total time granted is four months (a four-month initial period, with no extensions available), a reduction of one month from the current practice (a two-month initial period plus a three-month extension).
- Requesting an oral hearing: total time granted is one month from the final deadline for the filing of the written representations of the registered owner, and no extensions of time will be available. This is a reduction of one month from the current practice (a one-month initial period plus a one-month extension).
In addition, the Registrar will no longer permit oral hearings to be postponed. CIPO has reported that since 2005, approximately fifty per cent of scheduled oral hearings are consistently either postponed or cancelled. The Practice Notice allows for hearings to be rescheduled once, on consent, within one month of receiving the scheduling notice, if a party will not be available on the original date. No postponements will be granted after this, however, even on the basis of consent between the parties and/or on the basis of ongoing settlement negotiations.