Incontestability Of Marks And Its Importance To Trademark Owners

Incontestability is a strong word and having an incontestable trademark may renders your mark beyond the scope of abolishment in some scenarios. In Canada, while all incontestable trademarks are registered trademarks, all registered trademarks are not incontestable. "How does one get an incontestable trademark and what is the purpose of having one?" is a natural question our casual readers might have. In this blog, we explain more about these trademarks and why it is important to trademark owners.

Eligibility

In Canada, there are no statutory filing requirements that fetch you an incontestable trademark, as is the case in the United States. That being said, it takes five years for a standard trademark registration to be considered incontestable according to section 18 of the Trade-marks Act. It is always important to remember that only registered trademarks qualify for incontestability.

Benefits of Incontestability

There are several benefits granted to marks that are deemed incontestable. While the benefits granted to incontestable trademarks in Canada are comparatively fewer than those granted in the US, it always remains beneficial to have an incontestable trademark. Here’s the distinct benefit of incontestable trademarks in Canada.

After the end of the five-year period from the date at which the trademark was registered, no trademark registration can be effaced, amended, or held illegitimate based on the fact that it was used previously or because of the existence of a confusing third-party trademark. There are always exceptions, but these exceptions are few and far in between.

Defences to Incontestability

We mentioned the existence of certain exceptions that keep a check on the benefits to incontestability. According to the Canadian Trade-marks Act, an incontestable trademark can be challenged by a third party due to the presence of a confusing, pre-existing trademark. However, the third party must be able to prove that the defendant (the owner of the incontestable trademark) decided to adopt the trademark while being aware of the existence of the confusing mark.

Providing proof of someone else's knowledge can be difficult. It is for this reason that the third party must act on this knowledge or uncertainty before the completion of the five year period. On the flip side, in some cases it may be beneficial for the trademark owner to delay sending a cease and desist letter or delay proceeding with any court action until after the five-year anniversary of the date of registration. This is generally only a viable strategy when the five-year anniversary is coming up as delaying in policing your trademarks can have consequences.

To Conclude

It is believed that the term "incontestable" is rather misleading when considering the Canadian IP laws. An incontestable trademark in Canada significantly differs from incontestable trademarks in other countries. These differences make it all the more important that you working closely with our team of trademark professionals who specialize in IP matters. Contact us for advice regarding your trademarks and other IP to help set you up for success.