Canada: The Thymes They Are A Changin’

Last Updated: April 23 2013
Article by Cynthia Rowden and Meghan Dillon

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Cynthia Rowden
Meghan Dillon
Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions