This guide provides basic information on what the expungement (section 45) proceeding is. It is intended to help owners of registered trademarks represent themselves before the Trademarks Opposition Board. It does not constitute legal advice and does not cover every situation that may come up during the proceeding. For legal advice, please contact a trademark agent.
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- What is a trademark expungement (section 45) proceeding?
1. What is a trademark expungement (section 45) proceeding?
If a trademark has been registered in Canada for a period of three years or more, anyone can request that this registration be expunged (i.e. removed from the Register of Trademarks) or amended for non-use, by asking the Registrar of Trademarks to send a notice to the owner of the trademark, as per section 45 of the Trademarks Act.
Note: An expungement proceeding can be complex and can take considerable time. A trademark agent can help you. Click here to find one.
1.1 I received a section 45 notice, what do I do?
If you are the owner of a trademark and you have received a notice, you must submit evidence in order to prevent your trademark registration from being removed from the Register of Trademarks or amended.
Carefully read the notice to find out if you need to submit evidence in association with each of the goods and/or services appearing in your registration, or only in association with certain goods and/or services.
Failure to file evidence will lead to your trademark registration being removed or amended from the Register of Trademarks.
1.2 What can I submit as evidence?
- Submit evidence that demonstrates useFootnote 1 of your trademark in Canada at any time during the three-year period immediately preceding the date of the notice in association with each of the goods and/or services specified in the notice;
- Submit your evidence in the form of an affidavit or a statutory declaration identifying any objects (or photos of objects) and documents that support your claim, and attach them as exhibits;
- Do not include personal or sensitive information in your evidence, as all documents filed with the Registrar of Trademarks can be made available to the public;
- If you did not use your trademark during the three-year period preceding the date of the notice, explain why you did not use it and provide the date when you last used it.
Note: An affidavit or a statutory declaration is a written declaration or statement of facts that is confirmed by an oath or affirmation in the presence of a commissioner of oaths or a notary public
1.3 What do I do with my evidence?
- Submit your evidence to the Registrar of Trademarks and serveFootnote 2 a copy of it on the other party within three months from the date of the notice;
- Prepare a letter stating the date on which you served your evidence on the other party, and the method of service you chose to do so. Send the original of this letter to the TMOB and a copy of it to the other party.
You can also consult the following resources for more information:
Practice in section 45 proceedings
Section 45 Proceedings
FAQs on section 45 proceedings (registered owner)
contact the Trademarks Opposition Board at firstname.lastname@example.org.