CANADA Law and Practice Contributed by: Casey Chisick, Steven Kennedy, Karen MacDonald, Jessica Zagar, Dian Howard and Steven Henderson, Cassels Brock & Blackwell LLP
the filing of the applicant’s written representa - tions. Each party can request one cooling-off period, meaning that up to 14 months of total cooling-off time may be granted. Finally, if the parties are close to finalising a settlement, they can request (on consent) an additional three- month extension of time to complete negotia - tions. A summary cancellation proceeding for non-use cannot be commenced until at least three years after the trade mark was registered. There is no maximum period. There are no minimum or maximum time limits for when a general expungement proceeding can be commenced, except when the proceed - ing is based on the existence of a confusing third-party trade mark. In that case, the proceed - ing cannot be brought more than five years after the registration of the subject mark, unless the challenger can establish that the registrant knew of the third-party mark when they first adopted the subject mark. Copyright The Copyright Act does not prescribe any spe - cific time periods for the expungement of a reg - istration. However, see 7.1 Timeframes for Filing Infringement Lawsuits . 5.2 Legal Grounds for Filing an Opposition or Cancellation Trade Mark The Trademarks Act provides for seven legal grounds of opposition: • the application does not conform with the technical requirements for an application; • the application was filed in bad faith; • the trade mark is not registrable;
• the applicant is not the person entitled to registration of the trade mark; • the trade mark is not distinctive; • at the filing date, the applicant was not using and did not propose to use the trade mark in Canada in association with the goods or services specified in the application; or • at the filing date, the applicant was not enti - tled to use the trade mark in association with the goods or services specified in the appli - cation. The Trademarks Act does not expressly refer to “dilution” as grounds for opposition. However, a trade mark application can be opposed for a lack of distinctiveness, even if it is not tied to the claim of confusion. The Trademarks Act also provides the follow - ing two additional remedies for cancellation/ expungement. • A Section 45 summary cancellation proceed - ing – this remedy is limited to a situation where a registered trade mark has not been “used” by its owner in association with the goods and services listed in the registration for at least three consecutive years. A sum - mary cancellation proceeding for non-use cannot be commenced until at least three years after the trade mark was registered. There is no maximum period. • A Section 57 expungement proceeding – this is a broader remedy, which allows the Fed - eral Court to expunge a registration if it does not accurately express or define the existing rights of the registered owner. There is no minimum or maximum time limit for when a general expungement proceeding can be commenced, except when the proceeding is based on the existence of a confusing third- party trade mark. In that case, the proceeding
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