Canada: Use In Canada, Get It Before It's Gone – The Federal Court Of Canada Provides Some Clarity Regarding Claiming Use In Canada

Last Updated: October 2 2017
Article by Meghan Dillon and R. Scott MacKendrick

The Federal Court of Canada has provided some clarity on claiming use in Canada as a trademark filing basis, although some ambiguity remains. Ironically, this comes just as Canadian trademark law is on the cusp of a fundamental change (expected to be implemented in early 2019) to do away with use as a requirement for trademark registration.  

Under the current trademark system in Canada, applicants can base their trademark applications on any one or more of the following bases: (1) use in Canada; (2) proposed use in Canada; (3) use and registration abroad; and (4) making known in Canada. In Les Marques Metro / Metro Brands S.E.N.C. v. 1161396 Ontario Inc., (2017 FC 806. per Annis J.), the Federal Court has clarified that in order to base an application on use in Canada, pursuant to Section 30(b) of the Trade-marks Act (the "Act"), applicants must satisfy two requirements: (1) they must specify in the application the date(s) of first use in association with each of the general classes of goods and/or services; and (2) they must have used the mark in Canada in association with all of the goods and/or services covered by the Canadian use claim(s) as of the Canadian application filing date. While it has always been prudent practice to ensure that the mark has been used for all of the goods and/or services in an application filed on the basis of use in Canada, we now have an unambiguous pronouncement on this point from the Federal Court. As Justice Annis states at paragraphs 56-57 and 61 of the decision:

Subsection 30(b) of the Act reveals two requirements: (1) that the trade-mark application be for a trade-mark that has been used in Canada; and (2) that the application contain the date of first use for each of the general classes of goods or services described in the application. These requirements are readily apparent from a plain reading of subsection 30(b):...

The Act is clear that only a date of first use of the Mark in association with each general class of goods or services must be provided – i.e. the second requirement. However, an ambiguity remains with regards to the first requirement: does the Act's first requirement that the application be based on use of the trade-mark in Canada imply that all goods in the application must have been used as of the relevant date? ... [T]he Court must answer this question in the affirmative.

...

It is the Court's view that while subsection 30(b) of the Act merely requires that a date of first use be provided with regards to each general class of goods or services, the applied for trade-mark must nevertheless have been used in association with each of the specific goods or services identified in the general class prior to the applicant's filing date.  [Emphasis added.]

The relevant date referred to by Justice Annis above – specifically the date by which all of the goods and/or services covered in the application under the Canadian use claim(s) must have been used – is the filing date of the Canadian application. This is a helpful clarification, since many practitioners have understood that for the purposes of opposing based on Section 30(b) of the Act (namely that the mark has not been used for the specific goods and/or services since the date of first use claimed in the application), the applicant must have used the mark for each of the specific goods and/or services covered by the use claim since the claimed date of first use in Canada. 

In an opposition proceeding, the applicant would still, presumably, be required to demonstrate use with at least one of the specific goods/services in the general class as of the date of first use claimed in the application, but for the remaining goods/services in that general class, it would seemingly suffice to demonstrate use of the mark any time up to the application filing date.

The policy behind Justice Annis' conclusion that there must have been use of the mark for all of the goods and/or services in the Canadian use claim as of the filing date is that if an applicant were permitted to obtain a registration for the general class of goods and/or services, when there has not been use of the mark for each of the specific goods/services covered in the application under that general class, the result would be "absurd". The applicant would be granted a certificate of registration on the basis of actual use when there was no actual use for all the listed goods/services.

There remains, however, some ambiguity as to the exact meaning of "general classes of goods or services" in Section 30(b). Justice Annis is definitive that "general classes of goods or services" should not be equated with classes under the Nice Classification of goods and services. In other words, just because all of the applicant's goods fall into Nice Class 9 (which includes goods as diverse as computer software, fire engines, and goggles for sports), does not mean that all of these goods, even if they have all been used in Canada since the specified date of first use, would or should properly be considered to be in the same general class of goods for the purposes of Section 30(b). In addition, simply because goods/services have been grouped together by the applicant separated by commas (as opposed to semi-colons) after "namely" (e.g., clothing, namely, athletic clothing, action figure clothing, clothing belts, and clothing buckles), does not necessarily mean that the goods/services thus grouped will be determined by the Registrar or the Court to be in the same general class. However, the Court has offered no guidelines as to how "general classes of goods or services" is to be interpreted, leaving it to future opposition proceedings, or appeals, to be determined. 

In addition to providing some clarity regarding Canadian use claims, Justice Annis clearly states that "split decisions" – where an opposition succeeds in connection with only some goods/services – are permissible under Section 38(8) of the Act. Although there is nothing explicit within Section 38(8) suggesting that the Registrar could decide to partially refuse an application or partially reject an opposition, in practice, split decisions have been issued for more than 30 years. After a thorough analysis of Section 38(8), the object of the Act (namely "to maintain a proper balance between free competition and fair competition"), other policy considerations, Parliament's intentions, and the case law, Justice Annis concluded that the ability of the Registrar or the Court to issue split decisions is consistent with both the object of the Act and policy considerations. Once the changes to the Act come into force in early 2019, the Registrar's ability to issue split decisions will be expressly codified, removing any uncertainty about this practice.

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 Mondaq.com.

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

Authors
Meghan Dillon
R. Scott MacKendrick
Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
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
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

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 or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq 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 of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions