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 date.
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 added protection.
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.
