Executive Summary: Key Legal and Evidentiary Issues

• The Federal Court considered whether Beijing Pop Mart qualified as a "person interested" entitled to seek expungement of the ROBO SHOP registration (No. TMA1246685) under section 57 of the Trademarks Act.
• Central to the case was whether the ROBO SHOP trademark was distinctive of the Respondent as of the July 11, 2025 filing date, given the Applicant's prior and continuous Canadian use of POP MART ROBO SHOP.
• Confusion analysis under sections 6 and 16 turned on the strong resemblance between the Applicant's POP MART ROBO SHOP mark and the Respondent's ROBO SHOP mark.
• Evidence of a prior licensing relationship, and the Respondent's later contact with the Applicant's mall clients, supported a finding that the registration had been filed in bad faith.
• Because the Respondent was dissolved on January 28, 2025 and did not appear, the application proceeded unopposed and unrebutted.
• A late-disclosed transfer of the trademark's ownership did not affect the outcome, since a registered mark is presumed valid until the challenger meets its burden.

Facts of the case

Beijing Pop Mart Cultural Creative Co., Ltd. (the Applicant) designs, manufactures and markets toys commercialized under the POP MART brand. Since 2017, it has sold those toys through vending machines known as POP MART ROBO SHOP (the Applicant's Mark), operating them directly or through licensees around the world, primarily in China but also in Canada and numerous other countries. In Canada, the Applicant has used the Applicant's Mark continuously since at least 2020, notably in association with rental services of vending machines, and has promoted it through promotional materials and social media. Its Canadian revenue exceeded $120,000 in 2022, $330,000 in 2023 and $620,000 in 2024. The Applicant owns Canadian Trademark Application No. 2262477 for the Applicant's Mark, filed March 16, 2023 as a Canadian designation under the Madrid Protocol, with a priority date of February 2, 2023. The factual record rested on the affidavit of the Applicant's legal director, Zhao Hengru, which the Court found reliable, specific and well supported by documentary material.

On March 3, 2020, a "Robo Shop Authorized Operation Contract" (the License Agreement) was signed between Pop Mart International Group Ltd (a wholly owned subsidiary of the Applicant, as Party A) and Encounter Entertainment Operations Management Inc. (Encounter Entertainment, as Party B). That agreement granted Encounter Entertainment operation rights for "POP MART Roboshop" self-service sales terminals within authorized areas in Canada between March 3, 2020 and March 3, 2022. Encounter Entertainment and the Respondent, EC New York (UK) Ltd, were affiliated companies, both subsidiaries of Encounter International (CA) Group Limited (EC CA). The UK Corporate Registry listed Hua Zhang as a person with significant control of the Respondent, while corporate records for Encounter Entertainment and EC CA listed Haiyan Xue; the two individuals signed the Licensing Agreement on behalf of Encounter Entertainment and shared a business relationship, both also having significant control of a now-dissolved company, Lianhua (UK) Investment Holding Group Co., Ltd., the main investor in EC CA.

On October 20, 2022, the Respondent filed an application to register the ROBO SHOP trademark (the Impugned Trademark) in Canada for goods in Class 7 and services in Class 35, including vending machines and vending machine services, and the registration issued on July 26, 2024. The Applicant learned of it on October 31, 2024, when the Respondent emailed three Toronto shopping malls — Scarborough Town Centre, Station Square and Upper Canada Mall, the same malls where the Applicant or its affiliates had installed vending machines — advising them of the registration and asking for removal of the machines within thirty days. The Applicant's solicitors sent a cease and desist letter on December 24, 2024; the Respondent replied the same day denying any affiliation with EC CA and did not comply. Separately, on January 16, 2025 the UK Intellectual Property Office granted Pop Mart's application to cancel the Respondent's UK ROBO SHOP registration, invalidating it on the basis of bad faith.

Statutory and contractual provisions at issue

The application was brought under sections 57 and 58 of the Trademarks Act. Section 57 allows the Court to expunge a registration that is invalid under section 18, and subsection 18(1) sets out five circumstances of invalidity. The Applicant relied on three of them: paragraph 18(1)(b) (the mark is not distinctive when validity proceedings are commenced), paragraph 18(1)(d) (the applicant was not the person entitled to secure registration, engaging the entitlement rules in section 16), and paragraph 18(1)(e) (the application was filed in bad faith). The entitlement and confusion analysis drew on subsection 16(1) and on the confusion provisions in subsections 6(2) and 6(5), which list factors such as the degree of resemblance between the marks. The Court also noted section 19, under which a registered mark is presumed valid, placing the onus on the party seeking expungement.

The key contractual clause was Clause 4.2 of the License Agreement, which the Court reproduced. It provided that Party A "authorizes its intellectual property rights required for the operation of the 'POP MART Roboshop' Self-service Sales Terminal Machines to Party B, including but not limited to trademark, copyrights and other relevant rights," with the specific content of those rights subject to a separate authorization document bearing Party A's signatures and seal. The Court read this clause as confirming that the proprietary rights in the ROBO SHOP mark were vested in the Applicant, and that the Respondent, through its affiliated entities, had no right to the mark.

The court's reasoning and analysis

The Court first held that the Applicant was a "person interested" under subsection 57(1), a low threshold met by any party whose business is likely to be affected or hampered by a registration. On distinctiveness under paragraph 18(1)(b), the relevant date was the July 11, 2025 filing date of the application. Applying the three-part test from Blossman, the Court found that the Applicant's Mark had acquired significant reputation and goodwill in Canada through use and advertising since at least 2020, with sales increasing each year, which negated any distinctiveness of the Impugned Trademark. Reinforcing this, the Respondent had been dissolved on January 28, 2025 and so could not have used the mark after that date, leaving the Applicant's Mark as the only ROBO SHOP mark in the Canadian marketplace at the relevant date.

On entitlement under paragraph 18(1)(d) and section 16, the Court conducted a confusion analysis guided by Masterpiece and the "first impression" test. It found that ROBO SHOP was the striking element of the Applicant's POP MART ROBO SHOP mark, and that the two marks resembled each other closely in appearance, sound and idea, with the POP MART element merely qualifying the ROBO SHOP portion rather than distinguishing it. The parties' goods and services overlapped, both involving vending machines used to sell similar products. The Court concluded that the Applicant had used POP MART ROBO SHOP in Canada before October 20, 2022 (the Respondent's date of first use) and had not abandoned it by May 8, 2024, when the Respondent's application was advertised, so the Respondent was not the person entitled to registration under subsections 16(1)(a) and (c).

On bad faith under paragraph 18(1)(e), the Court noted that although the burden lies on the party alleging bad faith, unrebutted circumstances can displace the presumption of good faith, and here the Respondent offered no rebuttal. Given the prior licensing relationship, Clause 4.2, and the involvement of individuals closely associated with the Respondent, the Court found that the Respondent knew the rights in ROBO SHOP belonged to the Applicant when it filed. It nonetheless registered a confusingly similar mark and then contacted the Applicant's own mall clients — the very clients identified in the License Agreement — leading those clients to end their relationship with the Applicant. The Court inferred an intent to harm the Applicant's business and reputation, conduct departing from honest commercial practices.

Ruling and outcome

The Federal Court, per Justice Lafrenière, granted the application in favour of the Applicant, Beijing Pop Mart Cultural Creative Co., Ltd., holding the registration invalid under paragraphs 18(1)(b), (d) and (e), as well as subsections 16(1)(a) and (c) of the Trademarks Act. The Court ordered that the Registrar of Trademarks forthwith expunge registration No. TMA1246685 for the trademark ROBO SHOP. The relief secured by the successful Applicant was non-monetary: the decision granted expungement of the Impugned Trademark and did not order or award any sum of money, damages, or costs, so no monetary amount can be attributed to the outcome.