As discussed in our previous blog post, the Trade Marks Opposition Board (TMOB) issued 82 decisions in Section 45 proceedings in 2018, that is proceedings to determine whether a trademark registration will be cancelled for non-use.
Of these 82 decisions, approximately 35% of the cases resulted in the trademark registration being maintained for all of the goods and services. Approximately 35% of the cases resulted in a decision to maintain the registration for some but not all of the goods and services. Accordingly, where the registrant filed at least some evidence of use, about 70% of the time the registration was not cancelled in its entirety.
With respect to written representations, a survey of the 2018 decisions discloses that in most cases, either both parties or the registrant alone filed written representations. In less than 15% of the cases the requesting party alone filed written representations, and in only 18% of all cases neither party filed written representations.
If both parties filed written representations, the most likely outcome was that the registration was maintained, but that some goods or services were deleted. The next most likely outcome was that the registration was maintained completely. The least likely outcome in these cases was that the registration was cancelled.
If neither party filed written representations, the most common outcome was that the registration would be cancelled, and the next likely was that there would be a partial cancellation decision. The least likely outcome in such cases was that the registration would be maintained.
If only the registrant filed written representations, there was not a single case where the registration was cancelled. The registration was either maintained, or less commonly, the registration was partially maintained.
If only the requesting party filed written representations, there was only a single case where there was a partial decision, and only two cases where the registration was maintained. The most common outcome in such cases was therefore that the registration was cancelled.
As indicated above, written representations were filed by at least of of party in all but 18% of all contested cases. In contrast, oral hearings were held in only 35% of all of the decided proceedings.
Where both parties attended an oral hearing, the most common outcome was a split or partial decision. An equal number of cases resulted in the subject trademark registrations being either maintained or being cancelled in their entirety.
Where there was no hearing, the most common outcome was that the registration was maintained, but there were nearly as many decisions in which a partial decision was awarded. There were only 12% of the decisions in this category which resulted in registrations being cancelled.
Where only the registrant attended a hearing, the most likely outcome was that the registration was maintained. There was only one case in this category in which the registration was cancelled.
Finally, where only the requesting party attended a hearing, in most cases the registration was cancelled. There were only two such cases where a partial order was issued, and there were no cases in which the registration was maintained.
An analysis of the 2018 Section 45 decisions by the numbers of subjects suggests that if you represent a trademark owner, and section 45 proceedings are commenced, the most important step is to file some credible evidence of use if such evidence exists, as the odds are in favour of the registration being maintained for at least some of the goods or services covered by the registration. Where you represent a requesting party trying to cancel a trademark registration, an analysis of these decisions suggests that the best approach is to file written representations and to attend a hearing, as this significantly increases the likelihood of a decision being made in favour of cancelling the trademark registration.