decision of the Canadian Trade-marks Opposition Board,
Constellation Brands Québec Inc. c Sociedad
Vinícola Miguel Torres, S.A., 2016 TMOB 4
("Miguel Torres"), serves as a reminder of the
importance of stating an accurate and supportable date of first
use, when claiming use as a basis for registration in Canada.
In Miguel Torres, the Applicant filed an application to
register the trade-mark HEMISFERIO (the "Mark") for
"wines", claiming use in Canada since at least as early
as October 28, 2011. As one of its grounds of opposition, the
Opponent alleged that the Applicant had not used the Mark in Canada
as of the claimed date of first use.
As support for its claimed date of first use, the key piece of
evidence relied upon by the Applicant was an invoice dated October
28, 2011, which purportedly corroborated the date of first use
asserted by the Applicant's affiant. However, the
Opposition Board instead agreed with the Opponent's submission
that while the invoice was dated October 28, 2011 and goods were
shipped to Canada from Chile on that date, the approximate date of
arrival in Canada of those goods was not until January 26,
Accordingly, because transfer of the property in or possession
of the wine bearing the Mark from the Applicant to its Canadian
distributors did not take place in Canada until after October 28,
2011, there was no "use" of the Mark in Canada, within
the meaning of Section 4(1) of the Trade-marks Act (the
"Act"), as of the date of first use claimed in the
application. The application was therefore refused.
While we understand that there will no longer be a need to claim
a date of first use in trade-mark applications once the Canadian
trade-mark regime changes (likely in 2018), for the time being,
trade-mark applicants should strive to claim a date of first use
that is accurate and, where possible, supported by documentary
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.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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