• Important Decision May Impact Canadian Trade-Mark Filing Requirements for Applications Based On Foreign Use and Registration
  • May 15, 2013
  • Law Firm: Smart Biggar/Fetherstonhaugh - Ottawa Office
  • In a recent decision of the Federal Court of Canada, the Court has ruled on an issue that has been uncertain for decades.

    A Canadian trade-mark application must include at least one valid basis for registration. The three most common bases are (1) proposed use in Canada, (2) prior use in Canada, and (3) registration (or eventual registration) in the home country and use anywhere.

    With respect to the foreign use and registration filing basis, the Canadian Trade-marks Office, consistent with the Trade-mark Regulations, has allowed applicants to include this basis any time before the Canadian application has been advertised for opposition purposes. Moreover, there has never been a definitive decision as to whether there must have been "use" prior to the Canadian filing date.

    In The Thymes LLC v Reitmans Canada Limited, 2013 FC 127, a clear error appears to have been made in the application. Although it was filed on the basis of use and (eventual) registration in the U.S., the evidence filed by an opponent suggested that there was in fact no use in the U.S. as of the Canadian filing date.

    In upholding the rejection of the application by the Opposition Board, the Federal Court stated that "at the time of filing the application, if an applicant relies on registration or application and use abroad pursuant to that section, there must have been use of the trade-mark at the time of the application to rely on this section as a valid basis to obtain registration in Canada." [emphasis added]

    However, the scope of this decision is unclear and will undoubtedly be the subject of future debate as the Federal Court has not yet clearly addressed the issue in relation to an application in which the foreign use claim was introduced after the Canadian filing date.

    It might therefore be argued that, notwithstanding the breadth of the Court's language, this case merely stands for the proposition that there must simply be use at the date when this basis is introduced within the application.

    However, in view of the language used by the Court, a conservative conclusion from this case is that for a Canadian trade-mark application to be based on use and registration (or application) abroad, both the use and the foreign application or registration must exist as of the Canadian filing date. If they do not exist, this basis for registration may be vulnerable in an opposition. It should be noted, however, that if the application includes one or more additional bases for registration, such as proposed use in Canada, the application can still proceed in view of the additional basis for registration.

    While this case highlights the potential vulnerability of an application in an opposition in these circumstances, the impact on existing registrations is especially unclear. In general, failure to comply with technical filing requirements within an application can be used to oppose an application but not to invalidate a registration. However, there have infrequently been decisions in which registrations have been invalidated due to material misstatements that went to the basis upon which the registration was obtained.

    The appeal deadline for this decision is in early March. It is not yet clear whether an appeal will be filed.

    Should you wish to discuss any issues arising from this decision, please contact us.