Trademarks are a great way to safeguard your brand goodwill and identity as you build your presence in the marketplace and grow your market share. But what happens when bad actors attempt to exploit your popularity with attempts to secure trademarks in your name?
If you were like me or any of the other estimated 1.5 billion worldwide viewers, you were glued to your TV in December to watch Argentina beat France in the World Cup. Arguably one of the biggest sporting events worldwide, it’s not a surprise that there have been attempts to profit of that fame and visibility.
Recently, the China National Intellectual Property Administration (CNIPA) refused the malicious registration of hot words and logos such as “World Cup”, the names of famous football stars and the World Cup mascot “Laeeb”.
These so-called ‘squatters’ were hoping to have their trademark registrations bought out by FIFA or the respective football stars for large amounts to secure exclusivity in selling merchandise in China under those famous names. Luckily the CNIPA continues to carry out their special policies regarding malicious trademark registration.
The same thing is or can be happening in Canada too, especially now that the 2026 World Cup is being co-hosted by Canada. It’s arguably a sign of success – you know you’ve made it to the ‘big leagues’ when someone wants to capitalize on your success and brand power, but no one wants to become a victim of their own success. What remedies does one have against anyone attempting to obtain a trademark registration in Canada for famous names or global brand names
What is being done in Canada to protect companies and individuals from falling victim to these attempts?
1 | Refusal of the trademark application by the Canadian Intellectual Property Office (CIPO)
In cases where the application is for a surname or it falsely suggests a connection with a public figure, CIPO may issue an Examiner’s Report in which the trademark application is refused:
Name or Surname
CIPO may refuse to register an application if the applied-for trademark is a word that is primarily known merely as the name or surname of an individual who is living or who has died within the preceding thirty years.
The examiner will conduct (online) research to determine whether a trademark is a name or surname. Once this name has been located, the examiner will issue an objection if they consider that a person in Canada of ordinary intelligence and of ordinary education in English or French would be more likely to respond to the word by thinking of it as a name or surname than as something else.
For example, a trademark application for “Jones” or “Davies” will be refused, because it is clearly a name or surname of a living individual.
Falsely suggests connection with a public figure
The Canadian Intellectual Property Office will refuse to register trademarks in a case where the trademark consists of or so nearly resembles as to be likely to be mistaken for any matter that may falsely suggest a connection with any living individual or a musical band, who has a significant public reputation.
As an example, in 2002 someone tried to obtain a trademark registration for BOOGITY BOOGITY BOOGITY, and the Trademark Opposition Board (TMOB) refused the registration because of a false suggestion of connection with Darrell Lee Waltrip, former broadcast analyst and commentator for Fox Sports Network and professional NASCAR sports car racer. Darrell Waltrip coined the expression BOOGITY BOOGITY BOOGITY at the start of a NASCAR race and has announced this phrase continuously on Fox Broadcast programs at the start of all races during the NASCAR regular seasons.
In these scenarios, the patent offices are working on your behalf to do their part to weed out opportunists looking to manipulate the system. Generally, you are not even made aware or be required to act on these attempts. If an application does make it through the patent office defences, there are still avenues available to you to halt trademark squatters.
2 | Through opposing/litigating the squatter’s trademark application
Given that, since June 2019, applicants no longer need to claim/prove that they have used the trademark being applied for, the door has been opened to squatters and trolls who will search the world for unprotected brands and try to obtain registration for these brands in Canada.
If your company name or valuable brands are not registered in Canada, it is possible for a third party to register and own your mark without you ever being notified until you attempt to register the mark yourself or you get a notice from the registrant looking to monetize the situation.
If you’ve discovered that a squatter has filed an application for your trademark first, we’d recommend monitoring the trademark application and/or if circumstances permit, to reach out to the squatter with a request to abandon the trademark based on your prior rights. If the CIPO examiner approves the trademark application, it will become advertised which starts the 2-month period to file a notice of opposition (or an extension to oppose).
You could then oppose the trademark application and eventually submit proof to the Trademark Opposition Board (TMOB) that you used the trademark first by selling goods and services under the mark to Canadian customers (and with proper use of the mark on the products or with offering the services). Additionally (or if you haven’t used the trademark in Canada yet), you can invoke that an application has been filed in “bad faith” before the TMOB (namely with the intention to squat on your trademark) and provide the necessary evidence in this respect and/or that other requirements for trademark registration are lacking.
If the TMOB finds that you have first use of the mark in Canada and/or that the trademark application was filed in bad faith, the squatter’s trademark registration will become refused. The typical caveat here is that you that part of your proof should be that your brand or intended trademark is well-known enough to be an intentional target.
If the squatter managed to register the trademark application, you’d still have the possibility to invalidate the trademark registration by litigation proceedings before the federal court and/or to expunge the squatter’s trademark registration based on non-use after the squatter’s mark has been registered for 3 years. But wouldn’t it be nice if you could just avoid this all together?
3 | The not so secret third option
Of course, we think it goes without saying, but we’ll share it again anyway; the third option would be to avoid spending all that time and resources to thwart squatters from registering your mark by registering your trademark application as soon as possible. Ideally at the before or same time that you start using the mark anywhere in the world, assuming that Canada is a country of interest for your business.
Growing pains
Intentional IP strategy from the outset is the best prevention method for growing pains such as these. Protect yourself before you reach the level of success where you might fall victim to a squatter. You don’t want to spend all your time and energy building up your company and your brand to be faced with a preventable roadblock like this.
If you have any questions on what to do against a squatter or when you notice that any third party has filed or registered your trademark in Canada first, please do not hesitate to reach out.