Section 45 proceeding (trademark non-use)

A buyer meets this when a business’s value includes a registered trademark and the question is whether the registration could be cancelled for non-use. The Canadian Intellectual Property Office (CIPO) calls the process summary expungement.

How it works

Under s. 45(1) of the Trademarks Act, after three years beginning on the day a trademark is registered, unless the Registrar sees good reason to the contrary, the Registrar shall, at the written request of any person who pays the prescribed fee, or may on their own initiative, give the registered owner notice. The owner must furnish within three months an affidavit or statutory declaration showing whether the mark was in use in Canada at any time during the three years before the notice and, if not, when it was last used and why not. Under s. 45(3), if it appears to the Registrar that the mark was not used in Canada, for all or some of the goods or services, at any time during the three years before the notice, and that the absence was not due to special circumstances that excuse it, the registration is liable to be expunged or amended accordingly.

What to ask

• When each registered good or service was last used in Canada, and what records show it.
• Whether the registration is more than three years old, since the section applies after that point.
• Whether a notice is outstanding. CIPO’s Canadian Trademarks Database shows the status of active section 45 cases.

The Act is federal. See how to search the trademark and IP registers before buying a brand and the trademark opposition entry.