A recently published decision of the Trade-marks Opposition
Board clarifies when a trademark applicant can claim use and
application/registration in its country of origin as a basis
for trademark registration in Canada under section 30(d) of the
Trade-marks Act. To rely on this basis of
registration, an applicant must be prepared to establish that
the mark was in use in its country of origin (or elsewhere) at
the time of filing the Canadian application.
In Allergan Inc. v.
Lancôme Parfums and Beauté & Cie,
Lancôme had applied to register the trademark MYOTOX for
use in association with cosmetics. The sole basis for the
application was Lancôme's use and registration of
the trademark in France. Allergan opposed the application on
the basis that, among other things, the mark was not in use in
France or, alternatively, that the mark was abandoned.
As part of its evidence,
Allergan submitted the results of an Internet search that
suggested that the mark MYOTOX was either not used in France or
had been abandoned by Lancôme. Lancôme submitted no
evidence to establish that its mark was in use in France or in
any other country. In the absence of any evidence from
Lancôme, the Board concluded that the mark MYOTOX was not
in use by Lancôme in association with cosmetics on the
date it filed its Canadian application. Accordingly, the Board
rejected Lancôme's application.
Thus, an applicant that makes a
foreign-use claim under section 30(d) of the Act must be able
to establish that its mark was used in its country of origin
(or elsewhere) on the filing date of its Canadian application.
Before this decision, an applicant could amend an application,
before advertisement, to include a claim for foreign use and
application/registration. In light of this decision, applicants
should reconsider amending their Canadian applications to
include this claim unless they can establish that the mark was
in use in their countries of origin on the Canadian filing
A practical result of this
decision is that trademark applicants that wish to rely on a
mark's foreign use and application/registration as the
basis for registration of a mark in Canada should consider
including in their applications an additional claim on the
basis of proposed use in Canada. This is particularly important
if they have any doubt about the commencement of the foreign
use. Without the additional claim of proposed use in Canada,
applicants risk having their trademark applications refused in
their entirety. Adding a claim of proposed use will provide
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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