Court overturns 50-year registration practice

Shortly after the fiftieth anniversary of the Canadian Trademarks Act, the Federal Court of Canada has reversed a 50-year practice of the registrar of trademarks. Following Effigi Inc v Attorney General of Canada, the registrar can no longer refuse an application simply on the grounds that another party has filed a later application with an earlier date of first use.

On December 19 2000 Effigi Inc filed an application for MAISON UNGAVA, on the basis of proposed use. Ten months after that, Tricorn Investments Canada Ltd filed an application for UNGAVA in association with similar goods, claiming use since October 19 1981. Citing Tricorn's application, an examiner at the Trademarks Registry refused Effigi's application on the grounds that it was not entitled to registration since its application was likely to be confusing with a trademark previously used in Canada (ie, Tricorn's UNGAVA mark). Effigi appealed to the Federal Court.

The court reversed the decision and agreed with Effigi that the registrar did not have jurisdiction to refuse the application. It noted that the application had been refused under Section 37(1)(c) of the act, which stipulates that the registrar can refuse an application if satisfied that the applicant is not the person entitled to registration because the trademark is confusing with another mark for which an application is pending. The registrar also relied on Section 16, which defines "person entitled to registration". The court reasoned that the examiner did not have jurisdiction to go beyond Section 37 and overlook the date of filing to refuse an application on the basis that it was confusing with a trademark previously used or made known. At the examination stage, said the court, the examiner does not have enough information to grant priority to an application filed after another simply because the second claimed an earlier date of first use.

Therefore, if an applicant files its application after another similar one, it will have to resort to opposition proceedings and prove its earlier date of first use for the first application to be refused. The Opposition Board will have sufficient information to determine this date of first use, something the registrar does not have at the examination stage.

The decision has been appealed.

France Lessard, Léger Robic Richard, Montreal