Canada: Basing A Trade-mark Application On Registration And Use Outside Of Canada – The Landscape Following Thymes

When filing an application to register a trade-mark in Canada, there are multiple grounds on which the application can be based. Three of the most common are (1) proposed use of the mark in Canada, (2) prior use of the mark in Canada, and (3) registration (or eventual registration) of the mark in the applicant's country of origin combined with use of the mark anywhere in the world. The "country of origin" includes the country where the applicant is domiciled or is a citizen or any country where the applicant has a "real and effective commercial establishment," which may include, for example, an office, a manufacturing facility or a retail outlet.

The landscape prior to Thymes

A registration in the country of origin/use claim can be made at the time that the Canadian application is filed and can also be made by amendment at any time up until the application is published in the Canadian Trade-marks Journal. When basing a Canadian application on registration in the country of origin and use of the mark, until recently the conventional understanding among Canadian practitioners was that:

(a) use of the mark anytime up until the amendment of the Canadian application to include a country of origin registration/use claim would suffice; and

(b) the use of the mark could be use anywhere in the world, and did not need to be use in the applicant's country of origin.

The Thymes decision and the uncertainty created

The decision of the Canadian Federal Court in Reitmans (Canada) Ltd v Thymes Ltd ("Thymes"), 2013 FC 127, which we reported in our article "Important decision may impact Canadian trade-mark filing requirements for applications based on foreign use and registration", earlier last year, shed some doubt on these two conventional understandings. An appeal of the Thymes decision to the Federal Court of Appeal was recently discontinued and, therefore, this decision now unquestionably forms part of the legal matrix for trade-mark practice in Canada.

In Thymes, the applicant filed its Canadian application based in part on registration and use of the mark in the United States. However, during an opposition proceeding, the evidence indicated that as of the filing date of the Canadian application, there had not yet been any use of the mark in the United States. The country of origin registration/use basis for the application was therefore refused at first instance by the Trade-marks Opposition Board ("Opposition Board").

The Opposition Board's decision in Thymes was appealed to the Federal Court, and the Federal Court upheld the Opposition Board's decision. However, while the Opposition Board's analysis of the country of origin registration/use basis was accepted by the Court, statements made regarding the basis have created some uncertainty for practitioners. In particular, in characterizing the state of the law regarding the country of origin registration/use basis, the Court stated as follows:

There is no doubt a proper reading of that section requires 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]

While there is some ambiguity in the above passage, it could be read to suggest that in order for a country of origin registration/use claim to be valid, the mark must have been in use as of the Canadian filing date, regardless of when the country of origin registration/use claim is included in the Canadian application.

In addition, the Federal Court in Thymes, stated as follows at paragraph 19:

It is clear that section 16(2) of the Act emphasizes that use of the mark in the country of origin of the applicant is a requirement for registration in Canada. [emphasis added]

This statement appears to suggest that if a Canadian application is to be based on country of origin registration/use, not only must the registration be in the applicant's "country of origin" but so too must the use. While typically the applicant's use of the mark will be in the applicant's country of origin, in those cases in which the use relied on is elsewhere, the Thymes decision again leads to uncertainty as to the validity of such a claim.

The Court's statement regarding the use needing to be in the applicant's "country of origin" appears to be contrary to the relevant provision of the Trade-marks Act ("Act"). In particular, there is no requirement in section 16(2) of the Act that the use be in the applicant's "country of origin." Section 16(2) reads as follows:

Any applicant who has filed an application in accordance with section 30 for registration of a trade-mark that is registrable and that the applicant or the applicant's predecessor in title has duly registered in or for the country of origin of the applicant and has used in association with wares or services is entitled, subject to section 38, to secure its registration in respect of the wares or services in association with which it is registered in that country and has been used [...] [emphasis added]

Indeed, the manner in which section 16(2) is worded appears to expressly omit the "country of origin" requirement with respect to the applicant's use of the mark. As a consequence, the issue of whether the use of the mark must be in the country of origin is considered to be of lesser concern than whether the use of the mark must have occurred prior to the Canadian filing date.

The current situation and recommendations for filing

In circumstances where the use of the mark has been in the applicant's country of origin and has preceded the Canadian filing date, the Thymes decision will have no impact. However, the decision has created some uncertainty in situations where the use of the mark occurred after the Canadian filing date and/or has been in a country other than the country of origin. Including another basis for registering the trade-mark in Canada, such as use or proposed use of the mark, is recommended in cases where this uncertainty is present. If the claim to registration based on country of origin registration/use is found to be improper, the application as a whole will still proceed if one proper registration basis remains.

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 directly.

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