Pursuant to section 45 of the Canadian Trade-marks Act, any person may request that the Registrar give notice to a registered owner that the owner must show use of its mark in association with the goods and services identified in the registration. Such cancellation notices may be sent at any time following three years of registration. The procedure, administered by the Trade-mark Opposition Board, generally through specialised hearing officers, is aimed at the efficient and expeditious removal of deadwood from the register. Deadwood is particularly a problem owing to the lengthy term of initial protection, namely fifteen years, as opposed to the more common ten years.

The Canadian Intellectual Property Office (CIPO) has now proposed formal practice changes to the proceedings available under section 45. One major change contemplated allows for the Registrar to render a decision upon receipt of the registrant's evidence, without first calling for the requesting party's submissions as is currently done. The proposed changes would essentially allow the Registrar to maintain or expunge a registration very early in the process based on the evidence alone and without having heard from the entity initiating the proceedings.

CIPO's recently concluded consultation elicited overwhelming rejection of the proposal to permit decisions to issue before having heard from both parties. It was suggested that such a procedure would ignore due process and fail to apply fundamental principles of administrative fairness.

The second aspect of the proposed new procedure that was considered by those consulted to be very harmful was the removal of the right to rescind the proceedings on the request of the parties. Current practice allows the parties to make a joint application for rescindment, which generally results in the Registrar terminating the proceedings. This allowed parties to arrive at an arrangement acceptable to both, for example through the deletion of some but not all specified goods or services, and effectively terminate the proceedings. What appears to be contemplated under the proposed practice is a procedure which, once started, must result in a final determination. Not surprisingly, the groups commenting on the contemplated change strongly asserted that it was essential to preserve the ability of the parties to arrive at and effect a settlement.

Coleen Morrison

Marks & Clerk Canada
PO Box 957, Station B
Ottawa ON K1P 1C2
Canada
Tel: +1 613 236 9561
Fax: +1 613 230 8821
info@marks-clerk.ca
www.marks-clerk.ca