How to Defend Your Valuable Trademark in Section 45 Proceedings

Imagine you’ve invested time, money, and years of effort into securing your Canadian trademark registration. Then, one day, you receive a stark letter from the Canadian Intellectual Property Office (CIPO): a Section 45 Notice.

This letter is not a casual inquiry; it is a formal challenge to your registration's very existence. Under Section 45 of the Trademarks Act, any party can initiate a proceeding to force the Registered Owner to prove, under oath, that their mark is actively being used in Canada for the goods and services listed. Failure to provide legally sufficient proof of use can result in your registration being limited or completely expunged from the Register.

At Alphabetica Law, we specialize in defending brand owners against these administrative cancellations. This is a highly technical and evidence-intensive process where the burden of proof rests entirely on the Registered Owner. Your ability to defend your trademark—your most valuable asset—hinges on immediate, expert legal action.

What is a Section 45 Proceeding?

A Section 45 proceeding is a summary administrative action before the Trademarks Opposition Board (TMOB) designed to clear the Canadian Register of "deadwood"—trademarks that are no longer being used.

The Trigger

Any person or company, including a competitor, can file a written request asking the Registrar of Trademarks to issue a Section 45 Notice, provided the challenged trademark has been registered for three years or more.

Importantly, the party requesting the action does not have to prove any prior right or interest; they simply pay the prescribed fee and file the request. The request can be limited to challenging only specific goods or services listed in the registration, making it a targeted attack.

The Strict Time Clock Starts Now

Once CIPO issues the Notice, the Registered Owner is given a single, non-extendable three-month deadline to submit the required evidence. This short, critical period means there is no time for delay—you must engage legal counsel immediately to begin collecting and preparing your evidence.

The Registered Owner's Burden: Proving "Use"

The core of a Section 45 proceeding is the evidence. The burden is entirely on the Registered Owner to demonstrate use of the trademark in Canada.

The Key Period and Standard

The evidence you submit must show that your mark was in use in Canada for all goods and services listed during the three-year period immediately preceding the date of the Section 45 Notice.

This evidence must be submitted via an Affidavit or Statutory Declaration (a sworn statement) from a person with direct knowledge of the facts, such as a company officer or executive. This sworn statement must clearly:

1. Detail the volume, dates, and locations of sales or services provided.

2. Exhibit documentary proof, such as invoices, sales receipts, advertising materials, or packaging showing the trademark in association with the listed goods or services.

3. Correlate the use directly with the specific goods/services listed in the registration.

If you cannot prove use for every item, those specific goods or services will likely be deleted from your registration.

Addressing Non-Use and Special Circumstances

If you honestly did not use your trademark for a part or all of the relevant three-year period, your case becomes even more difficult. Your evidence must then prove that the non-use was due to special circumstances that excuse the absence of use.

CIPO only accepts circumstances that are truly temporary (i.e., you intend to resume use) and beyond your control. Simple business choices, strategic decisions, or financial hardship are typically not accepted as sufficient excuses.

The Danger of Licensed Use

If the trademark is used by a licensee (another company), the Registered Owner must provide an extra layer of proof: that they, the owner, controlled the character and quality of the goods or services the licensee was selling. Without specific evidence of quality control measures, the licensed use may be deemed invalid.

Why You Need Expert Legal Defence for Section 45 Proceedings

Unlike a trademark opposition proceeding, there is no cross-examination allowed in a Section 45 action. This means the case is decided solely on the strength and quality of the written evidence and arguments—making flawless drafting absolutely paramount.

At Alphabetica Law, we don't just gather receipts; we construct a legally sound defence:

• Strategic Evidence Selection: We analyze your business operations to select the precise invoices, samples, and sales data that meet CIPO's strict proof requirements, filtering out irrelevant or potentially damaging information.

• The Affidavit Blueprint: We draft the necessary Affidavit or Statutory Declaration, ensuring it aligns perfectly with established TMOB jurisprudence and contains the necessary legal language to prove the requisite "use."

• Preventing Partial Expungement: We meticulously ensure use is proven for every single item you wish to keep on the Register, fighting to prevent your registration from being limited by a targeted Section 45 challenge.

A successful Section 45 defence means protecting your brand’s registration. A failed defence means your registration is gone, opening the door for competitors to claim your mark. Don’t leave your valuable asset to chance.

If you have received a Section 45 Notice, or if you wish to clear the register of an unused competing mark, contact Alphabetica Law immediately. Time is not on your side.

Reference: CIPO Practice Notice in section 45 proceedings