Canada – Problems When Expunging a Trademark Registration!

Problems When Expunging a Trademark Registration!

A recent decision of the Federal Court, affirmed by the Federal Court of Appeal, scrutinized the applicant’s evidence relating to an application to expunge a trademark registration, and relied on the presumption of validity to dismiss the application. For all those interested in bringing such a proceeding these decisions serve as a warning to devote time and effort to gather the necessary evidence.

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Obtaining Trademark Registrations for Domain Names

A recent decision of the US Supreme Court has attracted significant publicity. In the decision the court disagreed with the USPTO and confirmed the trademark BOOKING.COM should be registered. The decision reviews the nature of the trademark system in the US and the basic principles. For the most part the same principles apply under the Canadian system. However, Canadian courts are more lenient in the case of marks alleged to be generic, but which are well-known as source identifiers to the public.

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What is Deviating Trademark Use?

A recent decision of the Federal Court deals with section 45 proceedings and whether use of a variant of the registered trademark by the registrant would establish use of the registered trademark. It has been often said that the practice of departing from the precise form of the trademark as registered is objectionable and dangerous practice that can lead to the invalidity of the registration. However, it remains to be seen how significant the deviation must be to destroy the validity of the mark.

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Bad Faith Clarified

The recent decision of Mr. Justice Arnold of the England and Wales High Court in the Sky case provides more certainty to determine what constitutes “bad faith” in the context of a trademark application or registration.

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John S. McKeown

Goldman Sloan Nash & Haber LLP

John S. McKeown
tel: (416) 597-3371


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