Section 18 of the Trademarks Act provides that the registration of the trademark is invalid if:
a) the trademark was not registrable at the time of registration;
b) the trademark is not distinctive when proceedings bringing the validity of the registration into question are commenced;
c) the trademark has been abandoned; or
d) subject to section 17 the applicant for registration was not the person entitled to secure the registration.
The registration of a trademark may also be expunged on the application of any person interested if the registration is likely to unreasonably limit the development of any art or industry. The Federal Court has exclusive original jurisdiction to hear all applications seeking expungement.
The onus of proof is on the party seeking to attack the validity of this registration. In broad terms, the registrant is entitled to the presumption that its registration is valid. The onus is on the applicant to prove its case and not for the respondent to disprove it.
Section 17 provides that the only person who may attack a registration on the ground of prior use or prior making known is the person who previously used a confusing trademark or tradename or made it known or their successor in title. To expunge an existing registration on this basis the applicant must establish that they or their predecessor in title:
(a ) previously used or made known a confusing trademark or tradename; and
(b) had not abandoned such confusing trademark or tradename at the date of advertisement of the application for the trademark sought to be expunged
A registration becomes incontestable against attack only on the ground of prior use or making known of a confusing trademark. Such incontestability applies only in proceedings commenced after the expiration of five years from the date of registration of a trademark. After this period no registration will be expunged or amended or held invalid on the ground of previous use or making known unless it is established that the person who adopted the registered trademark in Canada did so with knowledge of that previous use or making known. All other inquiries into the propriety of registration such as registrability, distinctiveness and abandonment may be raised without time limits.
If you have questions, please contact me at mckeown@gsnh.com.
Goldman Sloan Nash & Haber LLP 480 University Avenue, Suite 1600 Toronto, Ontario M5G 1V2 Direct Line: (416) 597-3371 Fax: (416) 597-3370 Email: mckeown@gsnh.com
These comments are general in nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.
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