Pursuant to section 45 of the Trademarks Act, any person, including the Registrar of Trademarks, has the authority to issue a section 45 Notice against any Trademark that has been registered for more than three years. Earlier this month, the Registrar initiated a pilot project whereby the Registrar will issue section 45 Notices at random in order to declutter and clear ‘deadwood’ from the Trademark Register.

What is a section 45 Notice? A section 45 Notice requires the registered owner of a Trademark to provide evidence of Use, as defined within section 4 of the Trademarks Act, via affidavit or statutory declaration, proving Use of the trademark within the preceding three year period. An affidavit or statutory declaration is a written declaration or statement of facts that is affirmed by oath in the presence of a commissioner or a notary public. The registered owner has three months from the date of the section 45 Notice to file its evidence with the Registrar. If the registered owner fails to submit adequate evidence or respond within the prescribed timeline, the trademark is liable to be expunged from the Trademarks Register.

If the trademark was not used during the relevant period, the registered owner’s affidavit or statutory declaration should specify the date the trademark was last used/never used and the reason(s) for the absence of Use during the relevant period. In order for the trademark not to be expunged, the registered owner must demonstrate ‘special circumstances’, for example circumstances beyond the registered owner’s control, excusing the absence of Use of the trademark during the relevant three year period preceding the section 45 Notice.

If you have received a section 45 Notice, contact Barriston today for assistance.

Written by Pamela Heary