Expunging a Registered Trade-Mark that is Not In Use
Under the Trade-Marks Act (“Act”), registrants must “use” their trade-mark or risk expungement (losing their registration). Under Section 4 of the Act, use is essentially deemed to include use on the packaging/marketing of wares at the time of transfer and when it is displayed and advertised in the performance of services, whether by the registrant or a licensee under Section 50 of the Act.
The purpose of this is to ensure that the Trade-Mark Registrar is clean from trade-marks that have fallen into disuse. It is not the intention of the Canadian Intellectual Property Office to allow registrants to “hold onto” trade-marks.
To ensure that this does not occur, Section 45 of the Act provides a summary procedure allowing the Registrar of Trade-marks to “clean house” of unused trade-marks. After the trade-mark has subsisted for 3 years, any person (upon paying a prescribed fee) may request the Registrar to require the owner of a trade-mark to provide evidence as to his/her/its use of the trade-mark in respect of the wares and/or services for which it is registered.
The trade-mark owner then has to demonstrate use by providing sufficient, factual, evidence of use (in the form of an affidavit or statutory declaration). If no satisfactory response is received and there are no special circumstances excusing non-use, the registration is liable to be expunged or amended accordingly.
The purpose of Section 45 is not to resolve substantive rights that may be contentious between the registrant and a third party. This may be more appropriately dealt with by way of expungement proceedings through the Federal Court.