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."
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
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.
The preceding is intended as a timely update on Canadian
intellectual property and technology law. The content is
informational only and does not constitute legal or professional
advice. To obtain such advice, please communicate with our offices
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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