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. However, there must be use somewhere, at the time that ground is asserted in an application, to support that ground. The registration (or application) relied upon must be in the applicant's country of origin, referred to here as "home registration."
A recent decision, The Thymes, LLC v. Reitmans (Canada) Limited 2013 FC 127, has found that reliance upon a home registration and use abroad requires use at the Canadian filing date and that the use must be in the applicant's country of origin. The decision is now the subject of comment and debate particularly on the applicability of the decision to applications that are 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 Federal Court of Canada (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 the section requires that, at the time of filing the application, if an applicant relies upon registration or application and use abroad pursuant to that section [s. 16(2)], there must have been use of the trademarks at the time of the application to rely upon this section as a valid basis to obtain registration" (emphasis added). The Judge then went on to say that it is "clear" that use of the mark in the country of origin is a requirement for registration in Canada.
Those comments are surprising for two reasons. The Judge's most noteworthy statement relates to the date of use. There has been a widespread and long-followed practice to amend applications after filing to include use and registration abroad, once use commenced somewhere. 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 Regulations have specified that an application based on a foreign registration or application must identify the name of a country (or countries) 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 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, later decisions will clarify this. However, since the language of the decision is very broad, and this interpretation, for now, will likely be applied by the Opposition Board until clarified 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 that the use relied upon be 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 on which to challenge a registration listed in the Act, and improper filing basis is not an included ground. Absent fraud, or a false claim to use abroad when there has been none, the validity of a registration relying upon a home registration and use should not be adversely affected by whether use abroad started before or after filing, as long as the mark was in use when the filing ground was included in the application.
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