Canadian trademark applications must identify a filing ground,
the most common of which are (1) use in Canada; (2) proposed use in
Canada; and (3) use and registration abroad. The latter, set out in
section 16(2) of the Trade-marks Act (the
“Act”), is widely used by non-Canadian applicants,
since it permits applicants to register their marks before use in
Canada has commenced. The registration (or application) relied upon
must be in the applicant’s country of origin, referred to
here as “home registration.” Until recently,
there had been a widespread and long-followed practice to amend
applications after filing to include use and registration
abroad, once use commenced somewhere - anywhere.
That practice has been questioned in a recent decision of the
Federal Court of Canada (the “Court”). In The
Thymes, LLC v. Reitmans (Canada) Limited 2013 FC 127
(Thymes v. Reitmans), the Court found that reliance upon a
home registration and use abroad requires use at the Canadian
filing date and that such use must be in the applicant’s
country of origin. The decision has been appealed, but in the
meantime, has generated significant comment and debate particularly
regarding its applicability to applications amended after filing to
add a claim under section 16(2) (e.g. to supplement an application
initially filed only on the basis of proposed use in Canada).
In the case before the Court the application was filed with a claim
to a home registration and use abroad, even though there had
apparently not been any use anywhere at the time the application
was filed. The opponent alleged that the application was not in
compliance with the Act, and both the Opposition Board and
the Court agreed. On the facts, the decision is clearly correct,
since a mark must be used to support this ground. However, the
Judge’s comments are not restricted to those facts. Instead,
under the heading “Was Use of the Applicant’s THYMES
Mark in the United States Required as of the Filing Date of the
Application in Canada?”, the Judge stated that there is
“no doubt a proper reading of [section 16(2)] requires that,
at the time of filing the application, if an applicant
relies upon registration or application and use abroad pursuant to
that section, there must have been use of the trademark at the time
of the application to rely upon this section as a valid basis to
obtain registration in Canada” (emphasis added). The Judge
then went on to say that it is “clear” that use of the
mark in the applicant’s country of origin is a requirement
for registration in Canada pursuant to section 16(2) of the
Act.
Those comments are surprising for two reasons. First, the
Trade-marks Regulations (the ”Regulations”)
permit amendments post-filing and pre-advertisement, except for
certain expressly excluded amendments. An amendment after filing to
add a ground based on a home registration and use abroad is not
excluded. Moreover, the Act and Regulations make
no comment on when use must have commenced. Second, since the
coming into force of the Act in 1954, the Act and
Regulations have specified that an application based on a
foreign registration or application must identify the name of a
country where the trademark has been used, together with
particulars of a home registration or application. It has never
been required that the foreign “use” be restricted to
the applicant’s home country. Based on the express language
in the Act and the Regulations, we consider the
latter judicial statement to be clearly wrong.
In this particular case, the deciding issue was whether the
applicant had use at the filing date, anywhere, to support its
filing ground and on this basis we believe that the Judge correctly
found the application not to be in compliance with the
Act. Unfortunately, the Judge’s dicta is broad
enough to apply to applications amended after filing to include a
new filing basis of use and registration abroad, where use
commenced after the Canadian filing date, but prior to making the
amendment.
Hopefully, this issue will be clarified on appeal. While the
Trade-marks Office has not changed its practice of accepting
applications amended after filing to include a claim to
use and registration abroad, nor has it begun questioning when such
use commenced, the very broad language of the decision, for now,
will likely be applied by the Opposition Board. Consequently,
until clarified on appeal or in other decisions, we believe that a
conservative approach requires that the claim to use and
registration abroad only be made when use has commenced at the
Canadian filing date, and in the applicant’s country of
origin.
Since the decision arose in the context of an opposition, it should
not have any impact on registrations that have already been issued.
There are a limited number of grounds listed in the Act on
which to challenge a registration, and an improper filing basis is
not one of them. Absent fraud, or a false claim to use when there
has been none, the validity of a registration relying upon a home
registration and use should not be adversely affected by whether
such use started before or after filing, as long as the mark was in
use when the filing ground was included in the application.
The Court’s decision in Thymes v. Reitmans is not
the only recent blow to non-Canadian applicants relying on use and
registration abroad as a filing basis in Canada. In order to
complete a claim to use and registration abroad, the applicant must
file a certified copy of the corresponding home registration before
the Canadian application will be advertised. In the past, it
was possible to obtain indefinite extensions where the foreign
registration had not yet issued. The Trade-marks Office has
recently changed its practice in that regard, and begun to deny
extension requests on this basis at a certain point (approximately
three years after filing). Hopefully, a practice notice will
soon be issued to clarify how many extensions an applicant can
obtain on this basis.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
