Prior Users Hung in Effigi

Article by Connie Guccione, ©2005 Blake, Cassels & Graydon LLP

The Federal Court of Appeal decision in Attorney General of Canada v. Effigi Inc. has led to changes in the practice of the Canadian Intellectual Property Office (CIPO) regarding the issue of entitlement during the examination process when assessing confusingly similar marks.

Effigi filed an application on December 19, 2000 to register the mark MAISON UNGAVA. The application was based on proposed use. The Examiner refused registration of the mark based on confusion with a co-pending application filed by Tricorn Investments on October 19, 2001 to register the mark UNGAVA. Tricorn claimed a date of first use of 1981. Based on Tricorn’s date of first use, which was prior to the filing date of Effigi’s application, the Registrar considered Tricorn to be entitled to registration of its mark, although it had a later filing date.

Effigi was unable to overcome the Examiner’s objection, and the Registrar refused the application. Effigi appealed the Registrar’s decision to the Federal Court.

The Federal Court said that the only issue to determine was the interpretation of s. 37(1)(c) of the Trade-marks Act (the Act) which reads:

"The Registrar shall refuse an application for the registration of a trade-mark if he is satisfied that the applicant is not the person entitled to registration of the trade-mark because it is confusing with another trade-mark for the registration of which an application is pending."

The Court determined that the language of s. 37 is clear and requires the Registrar to refuse an application for the registration of a mark if he is satisfied that the applicant is not entitled to registration because it is confusing with another mark for which a prior filed application is pending.

The interpretation of s. 37 did not require reference to s. 16, which deals with an applicant’s entitlement to registration, and which the Court held was only applicable as of the date of advertisement (after the examination process). The Court also stated that when an application was based on use, no particular evidence or evidence of the use had to be provided so the Registrar could not make a complete decision. Accordingly, the Federal Court allowed the appeal and referred the application back to the Registrar to approve and advertise the application.

Tricorn appealed the decision to the Federal Court of Appeal. The Court of Appeal upheld the decision of the Federal Court. It supported its decision by noting that s. 37 does not make any reference to the date of use claimed in an application. The Court of Appeal emphasized that the date of use in an application is not substantiated by evidence, but is merely an alleged date of use, so entitlement based on an earlier date of first use should be determined through opposition proceedings where the date of first use can be substantiated by evidence given under oath.

If an application is based on use in Canada, or on the mark having been made known in Canada, the adoption date is the date of first use or the date on which the mark was first made known. For proposed use applications, the filing date is the date of adoption.

Prior to this decision, CIPO’s practice, when assessing entitlement between two applicants with co-pending applications for confusing marks, was to approve the application with the earlier adoption date in Canada, rather than the application with the earlier filing date. As a result of the Effigi decision, CIPO issued a Practice Notice regarding entitlement when dealing with confusing marks.

Based on s. 37(1)(c) of the Act, during the examination process, the Registrar will no longer consider the date of first use or making known as the relevant date to assess entitlement. When pending applications concern marks which are confusing, the applicant with the earlier filing date or priority date will be considered to be the person entitled to registration of its trade-mark.

A subsequent applicant with an earlier date of use may oppose the first filed application and may request extensions of time to respond to any Examiner’s objection regarding its own application pending completion of the opposition proceedings.

Under previous Canadian practice, the criteria for determining priority between applications were the same in examination and in opposition. This decision and the subsequent reaction of CIPO make the Canadian practice similar to that in the United States.

The decision and practice notice confirm the importance of filing an application as soon as possible, whether it is based on proposed use or use. This ensures an earlier filing date for entitlement purposes and could avoid oppositions to applications for confusingly similar marks based on proposed use or with a later date of first use.

While CIPO will now focus on application dates to determine entitlement among applications, applicants should not make the mistake of thinking that a claim to registration based on use in Canada is irrelevant. Case law establishes that a claim to registration based on proposed use, when the applicant has actually used the mark, will invalidate an application. Failure to state the earliest date of first use may also be a source of invalidity if the failure was rooted in bad faith. Finally, as noted above, in an opposition proceeding, a date of first use (or of making known) will be relevant in determining entitlement.

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.