Last month we discussed the grounds for attacking the registration of a registered trademark in the Federal Court. This month we are discussing some of the potential grounds in a little more detail.
i. Not Registrable
If the trademark was not registerable at the date of its registration, the registration is invalid and may be expunged. The date of registration is critical and evidence that the mark has subsequently acquired distinctiveness to make it registrable under the Trademarks Act is irrelevant.
On an application to expunge based on this ground evidence must be presented to overcome the statutory presumption, that the certificate of registration is evidence of the facts set out in it.
When it is alleged, a registered trademark was not registerable because it is confusing with a previously registered trademark, a mere possibility of confusion is not sufficient to invalidate a registration.
ii. Not Distinctive
If a trademark is not distinctive at the time proceedings bringing the validity of the registration into question are commenced, the registration is invalid. A trademark may lose its distinctiveness if the owner permits the widespread use of the mark by rival traders. The widespread infringement of significant duration by just one trader may be sufficient.
The attacking party bears the burden of demonstrating invalidity and the trademark owner is not obliged to adduce evidence that its mark distinguishes its goods or services. Typically, to negate distinctiveness of a trademark, it must be shown that another confusing mark is known in Canada to a substantial extent.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
