Canada: Appeals Court Confirms First-to-File Advantage for Trademark Applications

Last Updated: October 21 2005

By Jessica Lumière

Published in The Lawyers' Weekly, July 22, 2005.

A recent Federal Court of Appeal decision in Canada (Attorney General) v. Effigi Inc., 2005 FCA 172, has confirmed the importance of filing as early as possible trademark applications that are based on first use of the trademark in Canada. The decision has the effect of changing the examination practices of the Trade-marks Office that have been in place for the past 50 years.

To be registered in Canada, the trademark must not be confusingly similar to any trademark registrations or pending applications. Where two or more co-pending trademark applications are considered confusingly similar, the Trade-marks Registrar has historically approved for publication the application that claims the earliest rights, which stem from the earliest of either the application filing date (or priority filing date) or the date of first use of the trademark in Canada.

Before the Effigi decision, this meant that an earlier-filed application based on proposed use in Canada (where use is intended in the future but has not yet occurred) would be rejected in favour of publication of a later-filed application based on use in Canada if the date of first use of the mark in the later-filed application preceded the filing date of the earlier-filed application. The applicant of the later-filed application was not required to provide evidence of the claimed date of first use. If the applicant of the proposed-use application was unable to satisfy the Registrar that the marks were not confusing, the only recourse was to commence opposition proceedings against the later-filed application to establish that the mark should not proceed to registration (on the basis of an incorrect date of first use, among other grounds). This practice has been significantly altered by Effigi.

On December 19, 2000, Effigi Inc. filed an application in Canada for the trademark MAISON UNGAVA based on proposed use. On October 19, 2001, Tricorn Investments Canada Ltd. filed an application for registration of the trademark UNGAVA on the basis of use since at least October 1981 in association with similar wares. At the examination stage, the Registrar rejected Effigi’s application for MAISON UNGAVA on the grounds that (i) it was confusing with Tricorn’s co-pending application for UNGAVA, and (ii) Tricorn’s application was based on an earlier date of first use, even though it was filed after Effigi’s application.

In Effigi’s appeal to the Federal Court of Canada, the Registrar was ordered to approve Effigi’s trademark application for publication. The Registrar appealed the decision to the Federal Court of Appeal.

In a decision released May 10, 2005, the Court of Appeal affirmed the lower court decision. In his reasons, Justice Décary acknowledged the importance of first use in the trademarks regime, and said that requiring the applicant of a later-filed application to use the opposition proceeding to prove its right to registration based on earlier use does not overshadow that importance.

Accordingly, the applicant of a later-filed trademark application can no longer rely on a bare statement of earlier use to be approved for publication over a co-pending and confusing application with an earlier filing date. However, the applicant of the later-filed application still has the option of commencing opposition proceedings against the earlier-filed application to prove that it had earlier rights in the trademark by providing evidence of its first-use date of the mark.

It should be noted that in the Effigi case, Tricorn’s application was filed 10 months after Effigi’s. If the Effigi application had been examined sometime during those 10 months, Tricorn’s application would not have been cited. Therefore, prior to the Effigi decision, despite an applicant’s diligence in filing its application early, whether that earlier application was published before a confusingly similar application with an earlier date of use was filed depended largely on how long it took for the earlier-filed application to be examined.

As a result of the Effigi decision, the presumption now falls in favour of the first to file an application for a mark, although ultimately the first to use the mark in Canada will be entitled to a registration. This has somewhat levelled the playing field for applicants filing on the basis of proposed use, because they no longer have to be concerned about the length of time until the application is examined. Applicants relying on a date of first use, on the other hand, are advised to now file trademark applications as soon as possible to avoid rejection by the Trade-marks Office based on confusion with an earlier-filed application. This reduces the likelihood of being required to commence costly and lengthy opposition proceedings to establish earlier rights based on date of first use.

Jessica Lumière is an associate in Torys’ Intellectual Property Department. Her practice covers all areas of intellectual property, with an emphasis on biotechnology law, including drafting, filing and prosecuting patent, trademark and copyright applications.

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

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

In association with
Related Video
Up-coming Events Search
Font Size:
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
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). 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 & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd 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 or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.