Canada: Diminishing Concerns Over Uncertainty Of Trademark Registrations Based On Foreign Registration And Use After Filing

Last Updated: July 31 2014
Article by Brian Isaac

As noted in our previous IP Updates of February 15, 2013 and January 22, 2014, Canadian Federal Court's decision in Reitmans (Canada) Ltd v Thymes Ltd, 2013 FC 127, raised, in the context of a trademark opposition, some uncertainty and concern regarding the ability to claim registration in Canada based on foreign registration and use when use of the trademark in the country of origin commenced after the Canadian filing date. However, two recent developments have reduced the significance of those concerns. 

Coors v Anheuser-Busch decision

First, in the recent decision of Coors Brewing Company v Anheuser-Busch LLC, 2014 FC 716, the Federal Court considered an application by Coors to expunge a trademark registration owned by Anheuser-Busch on the basis that, in light of the Thymes decision, the registration was invalid as use of the challenged mark commenced in the U.S. after the Canadian filing date. However, the Court dismissed the expungement proceedings and upheld the registration on the basis that allegations of an improper claim to registration based on foreign registration and use was not a ground for expunging an issued registration, as opposed to supporting a possible ground of opposing an application prior to registration. 

The Court considered the scheme of the Trademarks Act and jurisprudence regarding expungement of registrations based on misstatements made in the application process. The Court noted that the grounds of invalidity in the Trademarks Act did not include non-compliance with procedural filing requirements. However, the Court also noted that misstatements in a trademark application may invalidate a registration where the misstatement was intentionally fraudulent, or "where the misstatement was innocent but fundamental to the registration, in the sense that the registration could not have been secured without the misstatement ...".

The Court stated that Anheuser-Busch had made no such misstatements. The application had initially been filed based upon proposed use in Canada but was amended after filing to delete that basis and to add a claim to registration based on eventual U.S. registration and use in the U.S. Both claims had been accurate at the time that they were made. Since an incorrect foreign registration and use claim was the only ground asserted by Coors for invalidating the registration, Coors' request to expunge the registration was dismissed

While the Coors decision is consistent with prior jurisprudence dealing with allegations regarding improper claims in trademark registrations, it was the first case to expressly deal with a claim asserting invalidity based on the common scenario of amendment after filing to claim registration based on foreign registration and use. The decision confirms that a registration will not be invalidated based on that practice so long as the claims were true when made.

Pending amendments to the Trademarks Act

Second, and most significantly, extensive amendments to the Canadian Trademarks Act that were passed last month will, when proclaimed into force, remove any need or basis for claiming registration based on foreign registration and use. Those amendments will simplify the registration process in Canada and remove any requirement for applicants to identify a date of first use of the mark in this country or to provide details of use and registration of the mark abroad in order to perfect claims to registration. 

These amendments have been passed by Parliament and it is expected that the provisions will come into force later this year or early next year. Since Canadian applications will no longer include a claim to registration based on foreign registration and use, there will be no such uncertainty or concerns regarding validity in applications filed after the amendments come into force. However, with respect to applications advertised for opposition purposes before the amendments come into force, the concern over a possible ground of opposition will continue to apply.

Current recommendations

At the present time, if there is any question regarding whether or not a mark had been used prior to the filing date of the Canadian application, applicants who have based an application on foreign registration and use are advised to also maintain claims based on proposed use or use in Canada at least until after the period for third party opposition has passed.

For further information, please contact a member of our firm's Trademarks group.

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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Brian Isaac
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