In January 2009, the Canadian Trade-marks Opposition Board (“TMOB”) proposed numerous practice changes relating to trade-mark cancellation proceedings initiated under Section 45 of the Trade-marks Act (“Section 45 Proceedings”). After an open consultation period with the public was completed and the related submissions from the public were considered by the TMOB, a notice amending the practice of the TMOB with respect to Section 45 Proceedings was issued on July 7, 2009 (”Practice Notice”). The changes outlined in the Practice Notice will be placed into effect on September 14, 2009.
Under Section 45 of the Trade-marks Act, any person who pays the prescribed fee (“Requesting Party”) can request that the Registrar of Trade-marks (“Registrar”) issue a notice (“Section 45 Notice”) requiring that the owner of a registered trade-mark (“Registrant”) file evidence, within three-months from the date of issuance of the Section 45 Notice, showing that the registered trade-mark was in use in Canada during the three-year period immediately preceding the date of the Section 45 Notice in respect of each of the wares/services listed in the registration or to provide the reason(s) for non-use.
While the purpose of Section 45 of the Trade-marks Act has historically been a mechanism to clear the Canadian Trade-mark Register (“Register”) of “deadwood”, Section 45 Proceedings have increasingly become a vehicle to achieve other goals, such as, for example, to overcome objections raised in an Office Action in respect of a confusing trade-mark(s) or as a counteraction in trade-mark opposition proceedings.
PURPOSE OF THE CHANGE TO THE PRACTICE
The TMOB has stated that the changes outlined in the Practice Notice are part of an effort to respond to expectations regarding timeliness of Section 45 Proceedings and to more adequately represent the legislative purpose of Section 45 Proceedings, which are intended to serve as a statutory mechanism to summarily rid the Register of registered trade-marks that are no longer in use.
IMPORTANT CHANGES AND IMPACT
The most significant changes to Section 45 Proceedings included in the Practice Notice are as follows:
1) Extensions of Time and New Timeline for Filing Written Submissions
The TMOB will generally now only consider one request by the Registrant for an extension of time of up to four months to file its evidence of use (or reasons for non-use). Once the evidence has been filed by the Registrant, the TMOB will generally no longer grant requests to extend the deadline to file written representations or to extend the one-month deadline to request to be heard at an oral hearing.
The TMOB has also increased the time granted to each of the parties for filing written submissions from two months to four months.
The new practice with respect to extensions of time will significantly streamline Section 45 Proceedings. Presently, multiple extensions of time may be obtained at each stage of the proceeding, with consent or if exceptional circumstances are shown. Moreover, where a request for an extension of time, other than a retroactive extension of time, is refused, the party that made the request is also given one final month from the date of refusal to comply. Under the new practice, the timelines will be strictly enforced. Only one extension of time to file evidence of use (or reasons for non-use) will generally be permitted.
2) No Postponement of Scheduled Hearings
The TMOB will no longer grant postponements of scheduled hearings, even on the basis of consent between the parties and/or on the basis of settlement negotiations. After the hearing has been scheduled and if the parties agree that they no longer wish to be heard, the TMOB will proceed to issue a final decision for the proceeding. Notwithstanding the ongoing, the TMOB may discontinue the proceedings upon receipt of a request signed by or on behalf of both parties.
Notably, however, the foregoing does not prevent the party or parties that requested a hearing to cancel the hearing (if both parties requested the hearing, it will only be cancelled if both parties consent to the cancellation). If a hearing is cancelled, the TMOB will proceed to issue a decision, except in cases where the Section 45 Proceeding has been discontinued on consent or the Registrant has abandoned the subject registration.
The TMOB had initially proposed amendments that would: (1) allow the TMOB to issue a final decision to maintain, amend, or expunge the registration without the benefit of the parties’ written representations or oral submissions where the TMOB was satisfied that the evidence filed by a Registrant “clear on its face”; and (2) allow the TMOB to issue a decision to maintain, amend, or expunge the registration even if the ultimate hearing was cancelled by the Requesting Party and Registrant on consent. However, after consideration was given to the submissions made by the public and practitioners during the consultation period, the TMOB did not include these proposals in the final Practice Notice that will now be placed into effect on September 14, 2009.