Invalidation of a trademark registration is the legal process of removing a trademark from a trademark register as if such trademarks had never been registered. A Canadian trademark registration can be invalidated as a result of the following:
- Trademark is not used within three years: According to section 45 of the Canadian Trademarks Act, a trademark registration can be invalidated or expunged if the trademark is not used within three years with each of the listed goods and/or services after obtaining a Certificate of Registration. So after the Trademark Office issues a notice to the registrant to file an affidavit showing that their trademark is used, if the registrant is unable to do so, the trademark registration will be invalidated.
- Trademark is unregistrable: A trademark registration will be invalidated if the trademark was not registrable at the time of registration. A registrable trademark must have met all the criteria or requirements set out by the section 12 of the Trademarks Act. A registrable trademark:
- Must not be the surname or name of a person
- Must be non-descriptive of the quality or character of the listed goods or services, or where they originated
- Must not be confusing with another registered trademark
- Must not be mistaken for an official trademark.
If one or all the requirements are not met by the trademark, its registration can be invalidated.
- Trademark is not distinctive: A registration could be declared invalid if the subject trademark is non-distinctive of the goods or services of the registrants. A trademark is only distinctive when it distinguishes the registrant goods and/or services from the goods or services of others.
- Abandonment of mark: if it is confirmed that a trademark has been abandoned and not used again in Canada, its registration could also be invalidated.
- Registrant not entitled to apply: A trademark registration is invalid if the registrant was not the person who is entitled to apply for the registration in the first place. This could happen if, for instance, the mark was confusing with one of the following:
- A trade name that had been used before by another individual in Canada
- A trademark that had been used before or made known by another individual in Canada
A trademark that another person had filed a trademark application in Canada.
Also, the registrant is not entitled to apply for a trademark registration if the trademark does not belong to him or her. In this case, the trademark registration can be invalidated and removed from the trademark record.
