A Section 45 Notice, an Unrecorded Assignment and a 15-Year Term
Homegrown Retail Inc. owns registration TMA 902,455, issued 2 May 2017, for HARVEST & HEARTH in class 29 ('jams, preserves, fruit spreads'), class 30 ('baked goods, namely bread, muffins and cookies'), class 35 ('retail store services featuring food products') and class 43 ('restaurant and café services'). In January 2021 the business was sold: the mark and goodwill were assigned in writing to Hearthstone Foods Ltd., but the assignment was never recorded and the register still shows Homegrown. Hearthstone has continued to use the mark on jars of jam sold through grocery chains across Canada and in two retail stores in Nova Scotia. The bread, muffin and cookie line was discontinued in 2022, and the last two cafés were rebranded in 2023. On 4 April 2025 the Registrar sends a notice under s. 45 requiring evidence of use in Canada for each of the wares and services during the three years preceding the notice. Hearthstone's owner calls you: 'We have invoices for the jam, but we are still registered as Homegrown - and is the registration expiring soon anyway?'
1. Who responds to the s. 45 notice, whose use counts, and what must the evidence actually establish?
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Who responds. The s. 45 notice goes to, and the Registrar will deal with, the registered owner of record - Homegrown. Until the 2021 assignment is recorded, the file does not show Hearthstone, so the first step is to record the assignment: a copy of the written instrument signed by the assignor, the effective date, the fee and the recorded owner's request. Recordal matters beyond tidiness: an unrecorded assignment is vulnerable against a later purchaser for value without notice, and it complicates both this response and the next renewal.
Whose use counts. Usage must be traced through the chain of title across the whole three-year window, 4 April 2022 to 4 April 2025. Before the assignment took effect, use by Homegrown counts as owner's use. After it, Hearthstone's own use counts. If any related company used the mark under licence, s. 50 allows the owner to rely on the licensee's use provided the owner controls, directly or indirectly, the character or quality of the wares and services - so the written licence with quality-control terms is part of the evidence.
What the evidence must show. Use in Canada in the normal course of trade. For the jams, s. 4(1) requires the mark to be associated with the wares at the time of transfer of property or possession - representative labels, packaging and store photographs do more work than invoices alone, which show sales but not association. Add sales volumes and dollar values year by year, retail listings, and shipping records. For the class 35 retail store services, s. 4(2) is satisfied by performance or advertising in Canada: dated signage, flyers, website and social media captures. The standard is a prima facie showing of use for each item, so evidence must be itemised - one jam invoice does not save an entire class.
2. What should be done about the classes with no use since 2022 and 2023? Can the owner avoid expungement?
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What will happen if nothing is done. Section 45 is a summary, non-adversarial procedure: the owner files evidence, the Registrar decides, and there is no pleading stage and generally no cross-examination. For each ware or service where no use is shown, the Registrar will delete that item from the registration. The bread, muffins and cookies in class 30 and the café and restaurant services in class 43 are exposed on these facts.
The better route. File a voluntary application to amend the registration to delete the unused wares and services before the evidence deadline. This narrows the evidence required, avoids a public finding of expungement, and reduces renewal fees, which are charged per class. It also concentrates the evidence on the two live areas - class 29 jams and class 35 retail services - where the record is strong.
Special circumstances. The Act preserves a registration where non-use is due to special circumstances that excuse it, but the burden is on the owner and the doctrine is narrow. A deliberate business decision to discontinue a product line, a rebrand, or general economic difficulty is not a special circumstance; the owner would need something outside its control, such as a regulatory prohibition or a forced closure, together with evidence that it did what it could to maintain use. A plan to bring the bread line back later does not help: intention to resume is not use, and the relevant period is fixed by the notice.
Instruction point. Confirm in writing which lines the client intends to keep, and warn that deleting class 43 now means a fresh application, with a fresh filing date, if it ever re-enters café services.
3. When does this registration expire, and in what order should the recordal, amendment and evidence steps be taken?
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Term. The registration issued on 2 May 2017, before the 17 June 2019 amendments came into force, so it keeps the 15-year term that applied when it issued and expires on 2 May 2032. Renewals granted after the amendments are for 10 years, so the renewal in 2032 will run to 2042. The client is therefore not facing imminent expiry, and the s. 45 deadline must not be allowed to drift on a mistaken belief that the registration is about to lapse.
Renewal mechanics for the file. Renewal may be requested within the six months before expiry, with the per-class fee; late renewal is available within six months after expiry on payment of a surcharge; if the registration is not renewed at all it is expunged, and the owner is left with whatever common-law rights it can prove. Diary the window and confirm at that time that the renewal is filed by the correct owner of record.
Order of steps. (1) Record the 2021 assignment now, so that the register, the s. 45 file and the renewal all speak in the right name. (2) File the voluntary amendment deleting the unused class 30 and class 43 items. (3) File the s. 45 evidence within three months of the notice, with the itemised use evidence and the chain-of-title documents, requesting an extension before expiry if the affidavit needs more time. Serving the evidence without first recording the assignment invites a Registrar objection that the wrong person is answering the notice.