The Federal Court of Appeal had the occasion to review the so-called non-use cancellation action under section 45 of the Trademark Act in the context of the acquisition of the trademarks by a new owner in the case Comité interprofessionnel du vin de champagne v. Coors Brewing Company[1].
Section 45, and more specifically subsection 45(3), authorizes the Registrar of Trademarks, at the request of any person or on the Registrar’s own initiative, and following a proceeding initiated by a notice to the registered owner under subsection 45(1), to expunge from the Register of Trademarks the registration of a trademark that was not in use in Canada at any time during the period covered by that provision, where the absence of use, if that was indeed the case, was not due to special circumstances. The section 45 procedure allows “deadwood” to be cleared from the Register, where the absence of use of a mark can be penalized by expungement unless the registered owner can establish special circumstances.
The appeal arises from a decision of the Registrar dated April 28, 2021, refusing to expunge, at the request, of two French public Corporations, of three tradmark registrations related to beer products, namely, the trademarks “The Champagne of Beers” and “Le Champagne des Bières”, as well as the label and design for “Miller High Life, the Champagne of Beers” which were registered on August 6, 1971, October 10, 1986, and April 3, 1987 for the design.
The respondent, Coors, acquired the ownership of the registered trademarks in October 2016.
The appellants argue that the justification for the non-use of a trademark referred to in a section 45 notice must cover the entire period between the date when the mark was last in use and the date of the notice, thus ruling out the possibility, regardless of the circumstances of a given case, of considering the acquisition date of the mark at issue to be the starting point of the period.
Shortly before the decision, the Federal Court of Appeal had decided Centric Brands Holding LLC v. Stikeman Elliott LLP[2]. That decision accepted the validity, from a statutory interpretation standpoint, of what it referred to as the “New Owner Jurisprudence”, which it described as follows:
[30] … the principle behind the New Owner Jurisprudence is that the recent acquisition of a trademark may give rise to special circumstances contemplated in subsection 45(3) of the Act such that, in responding to a notice pursuant to subsection 45(1) in respect of the registration of the trademark, the new owner is not required to account for a period of non-use pre-dating the acquisition. In such circumstances, the task of the new owner of a registered trademark in section 45 proceedings is to establish special circumstances for non-use in the limited period from the date of acquisition to the date of the notice.
The Court of Appeal in the instant case received legal submissions from all parties on this decision.
The Facts of the Section 45 Notice
On April 3, 2017, the Registrar, at the appellants’ request, issued notices for each registration under subsection 45(1) of the Act, requiring Coors to provide within three months an affidavit or a statutory declaration showing whether the Marks were in use in Canada at any time during the three years immediately preceding the date of the Notice and, if not, the date when they were last so in use and the reason for the absence of such use since that date.
On November 2, 2017, Coors provided an affidavit to the Registrar as required under subsection 45(1) of the Act. The affidavit stated that the respondent was unable to demonstrate whether the Marks had been in use in Canada during the three years preceding the date of the Notice, and that the last time they were in use in Canada was apparently in 2012. The affidavit also indicated that when Coors acquired the Marks in October 2016, “it intended to sell the products bearing them, and it describes the steps taken to ensure their marketing and production, including obtaining the regulatory approvals required by the different provincial liquor bodies and boards. It also states that, given the scale of the transaction in which the respondent acquired the assets of Miller Brewing, including the Marks, significant resources were invested in reviewing each asset and incorporating it into an existing intellectual property portfolio and in considering the brand strategy for those assets”.
The Registrar’s Decision
On April 28, 2021, the Registrar issued its decision to maintain the trademarks on the trademark registrar. After noting no evidence of use was provided, the Registrar went on to consider if special circumstances justified the lack of use.
The Registrar noted that this test involves the consideration of three criteria: (i) the length of time during which the trademark at issue had not been in use; (ii) whether the reasons for non‑use were beyond the control of the registered owner; and (iii) whether the registered owner had the intention to shortly resume use. The Registrar also affirmed, citing Scott Paper[3], that the requirement in the second of these criteria carried the greatest weight because, if it was not satisfied, the registration at issue would have to be expunged, regardless of the outcome of the analysis of the other two criteria.[4]
Applying the criteria, the Registrar determined that the non-use should be calculated from the date of the acquisition of the mark and that the non-use constituted special circumstances justifying retaining the registrations on the Register.
The Federal Court’s Decision
In the appeal of the Registrar’s decision, the Federal Court determined that the Registrar had made no error in his decision.
In the instant appeal of the Federal Court decision, the appellants attacked the binding precedent decision Centric Brands Holding LLC v. Stikeman Elliott LLP[5].
The Court of Appeal reviewed the arguments of the appellants and ultimately found that the Centric Brands decision was binding on the Court and held:
I discern no palpable and overriding error in the findings of the Federal Court or of the Registrar on the issue of special circumstances excusing the absence of use of the Marks during the period found to be applicable in this case.[6]
The reinforcement of the New Ownership Jurisprudence should give comfort to legal counsel assisting a client through the many complex decisions involved in a major trademark acquisition that any non-use of acquired trademark registrations will be measured from the date of the acquisition, not some time beforehand.
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[1] 2026 FCA 2.
[2] 2025 FCA 161.
[3] See Scott Paper Limited v. Smart & Biggar, 2008 FCA 129.
[4] See Comité interprofessionnel du vin de champagne v. Coors Brewing Company, 2026 FCA 2 at para 18.
[5] 2025 FCA 161.
[6] See Comité interprofessionnel du vin de champagne v. Coors Brewing Company, 2026 FCA 2 at para 81.
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