POP GOES THE TRADEMARK: POP MART SECURES TRADEMARK EXPUNGEMENT OF COMPETITOR MARK FOR NON-DISTINCTIVNESS, CONFUSION, AND BAD FAITH

On June 19, 2026 the Federal Court released its decision of Beijing Pop Mart Cultural Creative Co., Ltd. v. EC New York (UK) Ltd., 2026 FC 846, expunging the respondent’s trademark in an uncontested application brought by the applicant, Beijing Pop Mart.

Beijing Pop Mart is the owner of the trademark “POP MART ROBO SHOP” and operates distinctive toy vending machines directly and through licenses under the POP MART brand in association with its mark. The Court noted that the POP MART ROBO SHOP mark has become a trendy culture and entrainment mark in the toy vending machine space, especially for Canadians in the Asian community and Canadians with an interest in anime and animation. The respondent EC New York, a company that dissolved prior to the Court’s determination of the application, registered its mark “ROBO SHOP” in association with several goods and services, including vending machines.

In its decision, the Federal Court focused on three grounds of invalidity: whether the ROBO SHOP mark is distinctive of the respondent, whether the respondent was entitled to secure registration of the ROBO SHOP mark, and whether the ROBO SHARK mark was filed in bad faith. Ultimately, the Court concluded that the applicant had established invalidity of the mark on all three grounds and accordingly ordered the mark to be expunged.

With respect to the distinctiveness allegation under paragraph 18(1)(b) of the Trademarks Act, which provides that a mark is invalid “if the trademark is not distinctive at the time proceedings bringing the validity of the registration into question are commenced,” the Court determined that the respondent’s mark could not have been distinctive at the relevant time period. This is because there was no evidence that the respondent had used the ROBO SHOP mark, and additionally because the applicant’s POP MART ROBO SHOP mark had already enjoyed significant reputation and goodwill within Canada to a degree sufficient to negate any distinctiveness of the respondent’s mark.

As the applicant alleged that the trademark was also invalid under paragraph 18(1)(d) of the Act, which states that a mark is invalid “if the applicant for registration was not the person entitled to secure the registration,” the Court assessed the s. 16 definition of “person entitled to secure the registration.” As s. 16 provides that a person is entitled to register a mark they or a predecessor has used in Canada so long as the mark is not confusing with another previously used mark, the Court went on to assess the likelihood of confusion between the ROBO SHOP and POP MART ROBO SHOP marks.

First, the Court found there was a significant resemblance between the two marks: the “ROBO SHOP” component of both marks were found to be the most striking aspects of the mark, with the “POP MART” aspect of the applicant’s not diminishing the degree of resemblance. The Court further found that the applicant’s POP MART ROBO SHOP mark has become known to the public, that the POP MART ROBO SHOP mark had been used prior to any alleged use of the respondent’s mark, and that there was an overlap in goods and services against which the mark was registered (i.e. vending machines and vending machine services). The Court thus ultimately concluded that the respondent was not a person entitled to secure registration under s. 16 of the Act, as their mark was confusing with the applicant’s mark.

With respect to the allegation of bad faith contrary to s. 18(1)(e) of the Act, the Court stated that, in the trademark context, evidence in respect of awareness of prior trademark rights and a prior business relationship can be taken into consideration in the Court’s validity assessment. In this case, a subsidiary of the applicant had entered into a licensing agreement with an affiliate company of the respondent, for the purpose of the affiliate gaining the right to operate certain “POP MART Roboshop” machines within authorized parts of Canada. The licensing agreement expressly referenced trademarks relating to operation of the “POP MART Roboshop” machines. Once the licensing agreement term ended, the respondent filed the application for their ROBO SHOP mark in Canada. They then emailed Canadian malls in which the applicant operated, advising the malls of the respondent’s mark and requesting the removal of the applicant’s vending machines. This led to several clients ending their business relationship with the applicant.

The Court found that the evidence established the respondent knew of the applicant’s mark at the time of registration, nevertheless filed a confusing mark, and then proceeded to contact the applicant’s clients. The Court then concluded that, through “a web of companies,” the respondent’s actions demonstrate “an intent to harm” the applicant’s mark and business. Thus, the mark was invalid under s. 18(1)(e) of the Act.