A trademark registration is neither permanent nor invulnerable. The most obvious threat to the lifeline of your trademark registration is an automatic expungement by the Trade-marks Office for failing to pay a renewal fee after each 15 year period. However, the more immediate threats come from third parties seeking to either have your registration thrown out or have certain wares or services deleted from the registration. The main arguments behind such third-party challenges centre around someone else having prior rights to your trademark or a confusing trademark, you no longer using your trademark to the extent that you have effectively given up your rights to it, or a defect existing in your application for registration or in the trademark itself. The two methods through which a third party can attack your trademark have their statutory foundations in the Canadian Trade-marks Act.

SECTION 57 CHALLENGE: CANCELLATION BY THE FEDERAL COURT

During the first five years that your trademark is registered, a person may apply to have the Federal Court strike out or amend your registration on the following grounds: a) the trademark was not registrable at the time it was registered; b) the trademark is not distinctive; c) the trademark has been abandoned; and d) you were not the person entitled to the registration of the trademark, i.e. there was previous use or making known of a confusing trademark or trade name by another person.

After your trademark has been registered for 5 years, the registration gains a type of “incontestability.” The registration can no longer be challenged on the last ground — a common ground for s. 57 applications — unless the application is brought by the person who has previously used the confusing trademark or made it known or unless you adopted your trademark with the knowledge that it had already been used or made known. However, the other three grounds for cancellation still remain.

SECTION 45 CHALLENGE: EXPUNGEMENT BY THE TRADE-MARKS OFFICE

After your trademark has been registered for at least three years, a person may request that the Trade-marks Office expunge or amend your registration on the basis of non-use, i.e. that you have not used the trademark in association with some or all of the wares or services named in the registration at least once in the past three years. If you cannot prove that you have used your trademark with any of the categories of wares or services listed in your registration, the Trade-marks Office will expunge the entire registration from the register. If you can prove that you have used the trademark with some but not all of the categories of wares and services named in your registration, the Trade-marks Office will narrow your rights in the registration by deleting the unused categories of wares or services from your registration.

>back to top