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.