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When is a Trademark Registration Invalid- Abandonment, Entitlement, Bad Faith and Unreasonably Limiting the Development of any Art or Industry

In January we discussed the grounds for attacking the registration of a registered trademark in the Federal Court. This month we are discussing the remaining potential grounds in a little more detail.


Abandonment

The registration of a trademark is invalid if the trademark has been abandoned. Whether a trademark has been abandoned is a question of fact which must be decided in each case after taking into consideration all of the surrounding circumstances. The onus of proving abandonment is on the party asserting such a claim.

Non use of a trademark by itself is not sufficient to establish abandonment and there must be an intention to abandon. Intention may be inferred from long disuse or from the adoption of a new mark to replace an unused mark. The intention with which abandonment is concerned is that of using the mark in connection with a particular good or service.


Entitlement

An applicant for registration was not the person entitled to secure the registration if:

(a) they did not satisfy the requirements of section 16 of the Trademarks Act;

(b) the registration was obtained by the inclusion of a materially false statement of use that was fundamental to the registration, in which case it is not necessary to show either fraud or intent to deceive; or

(c) the registration was obtained on the basis of a fraudulent misrepresentation or in fraud of the rights of the true owner.


Filed in Bad Faith

Subsection 18(1)(e) had been added to the Act applies if an application or registration was filed in bad faith. No direction in the Act has been provided concerning the application of the subsection and a number of trial decisions have considered the defendant’s subjective intention and the objective circumstances at the relevant time but there are no decisions of an appellant court in Canada.


Unreasonably Limiting the Development of any Art or Industry

Section 18.1 has been added to the Act to provide that the registration of a trademark may be expunged by the Federal Court on the application of any person interested if the court decides that the registration is likely to unreasonably limit the development of any art or industry.


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 of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.



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