Federal Court clarifies reliance upon use and registration abroad

It’s official: the Federal Court has ended the debate on whether marks must be in use abroad at the time of filing where such use is claimed as a basis for filing (The Thymes LLC v Reitmans (Canada) Limited (2013 FC 127, February 6 2013). This may have serious implications for the validity of some registrations. 

Canadian law requires that an application for registration disclose a basis for the application. The basis can be one or more of the following:

1. use in Canada (in which case, a date of first use must be disclosed);
2. proposed use in Canada (in which case, a declaration of use must be filed prior to registration); and/or
3. use and registration in another jurisdiction.

With respect to the third basis, whether or not the use in another jurisdiction must predate the Canadian application date has long been a question for debate. However, the Federal Court has confirmed that all of the elements (use and the foreign registration or at least a pending application) must exist as of the Canadian filing date.

The Thymes LLC filed an application to register THYMES on March 30 2005 based on proposed use in Canada, and use and registration in the United States. The application was successfully opposed by Reitmans (Canada) Limited. 

With respect to the reliance upon use and registration in the United States, Reitmans argued that, on the face of the US registration, it was clear that the use in the United States did not commence until after the Canadian filing date of March 30 2005:

"… the opponent points to the applicant’s evidence to support its contention that the applicant has not used its trademark in the US as claimed. In this regard, the opponent submitted… that the particulars of the applicant’s US registration… notes a first use of '20050712' and a first use in commerce of '20050712' for all of the applied for wares except candles. For candles, the first use was '20050701' and the first use in commerce was '20050701'."

The Opposition Board concluded:

"In my view, since the applicant was basing its right to registration on its application in the US, the applicant was required to have also used the mark in the US, particularly because the mark had neither been used nor made known in Canada. In this regard, Section 30(d) of the [Trademarks Act] specifically states 'and, if the trademark has neither been used in Canada nor made known in Canada, the name of a country in which the trademark has been used by the applicant and the applicant’s named predecessor in title, if any, in association with each of the general classes of wares or services described in the application'.”

On appeal, the Federal Court agreed.

Section 30(d) of the Trademarks Act provides as follows:

"An applicant for the registration of a trademark shall file with the Registrar an application containing …. in the case of a trademark that is the subject in or for another country of the Union of a registration or an application for registration by the applicant or the applicant’s named predecessor in title on which the applicant bases the applicant’s right to registration, particulars of the application or registration and, if the trademark has neither been used in Canada nor made known in Canada, the name of a country in which the trademark has been used by the applicant and the applicant’s named predecessor in title, if any, in association with each of the general classes of wares or services described in the application."

The issue before the Federal Court was whether the Opposition Board erred in concluding that the use of a mark registered or applied for in another jurisdiction was required to be as of the Canadian filing date. The court’s analysis was succinct:

"There is no doubt a proper reading of that section requires that, at the time of filing the application, if an applicant relies on 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 on this section as a valid basis to obtain registration in Canada."

Thus, the court has removed any uncertainty that may have previously existed and applicants for registration in Canada, who want to rely upon their use and registration outside of Canada, must ensure that all elements (both use and the registration/pending application) are in place prior to their Canadian filing date. Since this could have an impact on issued registrations as well, owners of marks that issued based on use and registration outside of Canada may want to review there registrations to ensure that there are no issues with respect to validity.

The court went on to deal consider whether the application could go forward on the basis of proposed use in Canada which required an assessment of the opponent’s allegation of confusion with the opponent’s registered mark. On the basis of the evidence submitted, the court held that the marks in question were confusing and rejected the application.

Robert A MacDonald and Monique Couture, Gowling Lafleur Henderson LLP, Ottawa