What are non-use proceedings?

Non-use proceedings are summary administrative proceedings under section 45 of the Trademarks Act in which the owner of a registered trademark is required to demonstrate use of the mark in Canada during the relevant period. The outcome of non-use proceedings can be full expungement of the registration, partial expungement of the registered goods and services that cannot be supported by evidence of use, or maintenance of the registration as filed. For brand owners and for parties seeking to clear a blocking registration, non-use proceedings are a powerful and relatively cost-efficient tool.

When you should consider challenging a trademark for non-use

Clearing a blocking registration. Non-use proceedings are the primary administrative mechanism to remove a registered trademark from the register where the owner cannot demonstrate use in Canada. A blocking registration that is not actually being used can be cleared through non-use proceedings more quickly and at lower cost than through litigation in court.

Opening the register for your own trademark application. A pending trademark application can be blocked by a prior registered mark that is no longer in use. Non-use proceedings can be used to remove or narrow the blocking registration, which can in turn clear a confusion citation in an examiner’s report or remove an obstacle to advertisement and registration.

Narrowing overbroad registrations. Non-use proceedings can be used to narrow a registration where only some of the registered goods and services are supported by evidence of use. Targeting the unused portions of a registration can reduce the commercial footprint of a competitor’s mark without disturbing the portion that is actually in use.

Leverage in related disputes. Non-use proceedings can provide leverage in related disputes, including infringement disputes, opposition proceedings, cease and desist exchanges, and settlement negotiations. Putting a registered owner to its proof on use can change the commercial dynamics of a broader dispute.

Relevant laws and regulations

Trademarks Act, RSC 1985, c T-13. Canada’s federal trademarks legislation, which sets out the summary non-use cancellation procedure under section 45, the definition of “use” under sections 2 and 4, and the rules on deemed abandonment and special circumstances excusing non-use.

Trademarks Regulations, SOR/2018-227. The federal regulations under the Trademarks Act, which set out the procedural rules for non-use proceedings, including deadlines, evidence requirements, and the form of the affidavit or statutory declaration filed in response to a section 45 notice.

Common legal issues

Statutory definition of “use” under section 4. Non-use proceedings turn on the statutory definition of “use” in section 4 of the Trademarks Act. Use with goods generally requires the mark to be marked on the goods or their packaging at the time of transfer in the normal course of trade, while use with services requires the mark to be used or displayed in the performance or advertising of those services. A registered owner responding to non-use proceedings needs to match the evidence to the correct statutory category for each registered item.

The three-year grace period. Non-use proceedings can be brought against registered trademarks only after three years following the date of registration.

The three-year usage period. Only after the grace period, non-use proceedings require the registered owner to demonstrate use during the three years immediately before the date of the section 45 notice. The evidence is filed by affidavit or statutory declaration. Weak, generic, or undated evidence is one of the most common reasons non-use proceedings succeed in expunging or narrowing a registration.

Partial expungement and scope of registered goods and services. Non-use proceedings frequently result in partial expungement, where the Registrar removes goods and services that are not supported by evidence of use. Overbroad registrations are particularly vulnerable to partial expungement, and a registered owner may need to concede or narrow the scope strategically during non-use proceedings.

Special circumstances excusing non-use. Section 45(3) of the Trademarks Act allows a registered owner to maintain the registration despite non-use where special circumstances excuse the absence of use. The threshold is high and generally requires evidence of the reasons for non-use, the length of the non-use, and a serious intent to resume use. Special circumstances arguments in non-use proceedings are fact-specific and rarely succeed without substantial supporting evidence.

Licensed use and section 50 control. Use of a trademark by a licensee only counts as use by the registered owner where the owner has direct or indirect control over the character or quality of the goods and services under section 50 of the Trademarks Act. Non-use proceedings frequently turn on whether licensed use can be credited to the registered owner, which requires evidence of a licence and of actual control. Gaps in section 50 compliance are a common reason non-use proceedings succeed despite apparent marketplace use of the mark.

Evidence of use in the normal course of trade. The evidence in non-use proceedings must show use in the normal course of trade. Isolated sales, internal transfers, and promotional distributions may not qualify as use, and a registered owner defending non-use proceedings needs evidence of genuine commercial activity supported by invoices, packaging, advertising, and sales records tied to the relevant three-year period.

Interaction with related proceedings and foreign filings. Non-use proceedings often sit alongside related matters — concurrent oppositions, infringement disputes, examiner’s report responses on the challenger’s own application, and foreign filings that claim priority from or rely on the Canadian registration. An adverse outcome in non-use proceedings can affect all of these related matters, so the defense is generally coordinated with the broader portfolio and enforcement strategy.

Frequently asked questions

Who can initiate non-use proceedings? Any person can request that the Registrar issue a section 45 notice by paying the prescribed fee. The requesting party does not need to own a competing mark or demonstrate a specific interest in the registration.

How long do non-use proceedings take? Non-use proceedings are generally faster than oppositions, but can still take one to two years from the issuance of the section 45 notice to a decision, depending on evidence, written arguments, and any hearing.

What happens if the registered owner does not respond to a section 45 notice? If the registered owner does not file evidence of use or special circumstances within the prescribed period, the registration is generally expunged.

Can non-use proceedings be appealed? Yes. A decision in non-use proceedings can be appealed to the Federal Court, and new evidence can be filed on the appeal.

Can non-use proceedings be resolved by settlement? Yes. Non-use proceedings can be resolved through withdrawal, voluntary amendment of the registration, assignment, licensing arrangements, or broader commercial settlement between the parties.