The Thymes They Are a Changin’
April 17, 2013
Canadian trademark applications must identify a filing ground, the most common of which are (1) use in Canada; (2) proposed use in Canada; and (3) use and registration abroad. The latter, set out in section 16(2) of the Trade-marks Act (the “Act”), is widely used by non-Canadian applicants, since it permits applicants to register their marks before use in Canada has commenced. The registration (or application) relied upon must be in the applicant’s country of origin, referred to here as “home registration.” Until recently, there had been a widespread and long-followed practice to amend applications after filing to include use and registration abroad, once use commenced somewhere - anywhere.
That practice has been questioned in a recent decision of the Federal Court of Canada (the “Court”). In The Thymes, LLC v. Reitmans (Canada) Limited 2013 FC 127 (Thymes v. Reitmans), the Court found that reliance upon a home registration and use abroad requires use at the Canadian filing date and that such use must be in the applicant’s country of origin. The decision has been appealed, but in the meantime, has generated significant comment and debate particularly regarding its applicability to applications amended after filing to add a claim under section 16(2) (e.g. to supplement an application initially filed only on the basis of proposed use in Canada).
In the case before the Court the application was filed with a claim to a home registration and use abroad, even though there had apparently not been any use anywhere at the time the application was filed. The opponent alleged that the application was not in compliance with the Act, and both the Opposition Board and the Court agreed. On the facts, the decision is clearly correct, since a mark must be used to support this ground. However, the Judge’s comments are not restricted to those facts. Instead, under the heading “Was Use of the Applicant’s THYMES Mark in the United States Required as of the Filing Date of the Application in Canada?”, the Judge stated that there is “no doubt a proper reading of [section 16(2)] requires that, at the time of filing the application, if an applicant relies upon registration or application and use abroad pursuant to that section, there must have been use of the trademark at the time of the application to rely upon this section as a valid basis to obtain registration in Canada” (emphasis added). The Judge then went on to say that it is “clear” that use of the mark in the applicant’s country of origin is a requirement for registration in Canada pursuant to section 16(2) of the Act.
Those comments are surprising for two reasons. First, the Trade-marks Regulations (the ”Regulations”) permit amendments post-filing and pre-advertisement, except for certain expressly excluded amendments. An amendment after filing to add a ground based on a home registration and use abroad is not excluded. Moreover, the Act and Regulations make no comment on when use must have commenced. Second, since the coming into force of the Act in 1954, the Act and Regulations have specified that an application based on a foreign registration or application must identify the name of a country where the trademark has been used, together with particulars of a home registration or application. It has never been required that the foreign “use” be restricted to the applicant’s home country. Based on the express language in the Act and the Regulations, we consider the latter judicial statement to be clearly wrong.
In this particular case, the deciding issue was whether the applicant had use at the filing date, anywhere, to support its filing ground and on this basis we believe that the Judge correctly found the application not to be in compliance with the Act. Unfortunately, the Judge’s dicta is broad enough to apply to applications amended after filing to include a new filing basis of use and registration abroad, where use commenced after the Canadian filing date, but prior to making the amendment.
Hopefully, this issue will be clarified on appeal. While the Trade-marks Office has not changed its practice of accepting applications amended after filing to include a claim to use and registration abroad, nor has it begun questioning when such use commenced, the very broad language of the decision, for now, will likely be applied by the Opposition Board. Consequently, until clarified on appeal or in other decisions, we believe that a conservative approach requires that the claim to use and registration abroad only be made when use has commenced at the Canadian filing date, and in the applicant’s country of origin.
Since the decision arose in the context of an opposition, it should not have any impact on registrations that have already been issued. There are a limited number of grounds listed in the Act on which to challenge a registration, and an improper filing basis is not one of them. Absent fraud, or a false claim to use when there has been none, the validity of a registration relying upon a home registration and use should not be adversely affected by whether such use started before or after filing, as long as the mark was in use when the filing ground was included in the application.
The Court’s decision in Thymes v. Reitmans is not the only recent blow to non-Canadian applicants relying on use and registration abroad as a filing basis in Canada. In order to complete a claim to use and registration abroad, the applicant must file a certified copy of the corresponding home registration before the Canadian application will be advertised. In the past, it was possible to obtain indefinite extensions where the foreign registration had not yet issued. The Trade-marks Office has recently changed its practice in that regard, and begun to deny extension requests on this basis at a certain point (approximately three years after filing). Hopefully, a practice notice will soon be issued to clarify how many extensions an applicant can obtain on this basis.
Cynthia Rowden, B.A., LL.B., is a partner with Bereskin & Parr LLP and head of the firm's Trademark practice group.
Meghan Dillon, B.Sc. (Psych.), LL.B., is an associate lawyer in Bereskin & Parr LLP's Trademark Practice group.
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