Section 45 proceedings in Canada are proceedings to cancel a trademark registration for non-use at the request of a third party. If the proceedings are contested by both the registered owner and the requesting party, then the result will be a decision by the Board to cancel the registration, to maintain the registration, or to maintain the registration for some of the goods or services, and to cancel it for others (a “partial decision”).

In the first six months of 2019, the Board issued 35 decisions in Section 45 matters. In the second half of 2019, the Board issued another 29 decisions. The total 2019 decisions of 64 cases, was down somewhat from the 82 Section 45 decisions which were issued in 2018.

Partial decisions, where some of the goods/services were maintained and some were deleted from the trademark registration, were issued in just under 50% of all decisions. The number of cases where the trademark registration was expunged and the number of cases where the trademark registration was maintained were almost identical.

In the first half of 2019, and in 2018, there was an equal split between decisions to maintain and decisions to expunge and partial decisions. Accordingly, during this latest time period, there were a much more significant number of partial decisions issued by the Board.

Both parties filed written representations in 45% of all cases. Neither party filed written representations in 24% of all of the cases, and the registrant only and the requesting party only cases were 17% and 14% of the total cases respectively.

When only the requesting party filed written representations, there were no cases where the registration was maintained in its entirety. Where only the registrant filed written representations, in every case there was a partial decision issued. Where neither party filed written representations, in only one case was the registrant expunged in its entirety.

Oral hearings were again much less common in Section 45 proceedings than in opposition proceedings. No hearing was held in 65% of all of the cases.

Registrants were self-represented in roughly 17% of all of the cases, and the registration was only maintained in full in one of these cases.

The length of time from the date of the issuance of the Section 45 Notice, which is the commencement of the Section 45 procedure, to the date of the decision, ranged from 22 months to 41 months, with the average duration being 29 months.

In our next posts, some of the most important Section 45 decisions decided in this time period will be highlighted.