Can A Misstatement In My Trademark Application Come Back To Haunt My Trademark Registration?

A trademark registration is a powerful tool. It serves as prima facie proof of ownership and validity, provides the mark with national protection, and gives access to actions to stop infringement and the depreciation of a mark's goodwill. Trademark owners ought to be mindful, however, of ensuring that all statements made to the Trade-marks Office in obtaining the trademark registration are truthful and accurate, lest they give others potential ammunition to invalidate the trademark registration.

In general, section 18 of the Trade-marks Act, RSC 1985, c T-13, provides four enumerated grounds to invalidate a trademark registration: (1) the trademark was not registrable at the date of registration; (2) the trademark is no longer distinctive at the time the proceeding is brought; (3) the trademark has been abandoned; and (4) the applicant for the registration was not the person entitled to secure the registration. Proceedings invoking the second and third grounds render a registration invalid at the time the decision is rendered. Successful challenges to invalidity on the first and last grounds, however, will result in the registration being deemed void ab initio - as if the registration had never occurred.

As confirmed by the recent Federal Court of Appeal decision in Concierge Connection Inc. v Venngo Inc., 2015 FCA 215, Canadian courts have developed two additional circumstances rendering a registration void ab initio, both relating to misstatements made to the Trade-marks Office in the course of applying for the trademark or obtaining registration, specifically, misstatements that are: (1) intentional and fraudulent misrepresentations; or (2) innocent misrepresentations that are fundamental to the registration, in the sense that the registration could not have been secured without the representations.

But what exactly are those types of "innocent" misrepresentations that are "fundamental" to the registration? Originally, such misstatements were understood to be restricted to those matters listed in section 12 of the Trade-marks Act, which identifies types of marks that are not considered inherently registrable; for example, marks that are primarily merely names or surnames, clearly descriptive marks, generic marks, and mark confusing with already registered marks. In cases where, without the innocent misrepresentation, the section 12 barriers would have been insurmountable, the registration would be deemed void ab initio.

The Federal Court...