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April 15, 2013 Vol. 68 No. 8 Back to Bulletin Main Page

CANADA: Significant Change in Canadian Law … or Perhaps Not

It has been a long time since a few sentences from the Federal Court of Canada have caused such a stir within the Canadian trademark community. Many (perhaps most) within the trademark community believe that the Court’s decision in The Thymes, LLC v. Reitmans (Canada) Ltd, 2013 FC 127 (Feb. 6, 2013), significantly changes the law and has rendered a significant number of pending trademark applications vulnerable to attack. The remainder of the trademark community, however, feels that this decision has changed nothing.

A Canadian trademark application/registration must include at least one valid basis for registration. The three most common bases are (1) use in Canada, (2) proposed use in Canada and (3) registration (or application) in the home country and use anywhere (“use and registration abroad”). This case considered the use and registration abroad basis. In particular, the Court considered the issue of when use abroad must have occurred for the basis to be valid.

The Thymes decision was an appeal to the Federal Court of Canada from a decision of the Trade-marks Opposition Board. The trademark application as originally filed included a use and registration abroad basis. The evidence suggested that there had, in fact, been no use abroad prior to the Canadian filing date. The Court held that this basis for registration was therefore invalid. This conclusion, based on these facts, is entirely consistent with previous Canadian decisions.

It is important to understand, however, that it is not necessary to include the use and registration abroad basis at the time of filing. That basis can be added anytime before the application is advertised for opposition purposes. This decision therefore leads to the following question: If the use and registration abroad basis is added after the Canadian filing, must there be use abroad as of the Canadian filing date, or only as of the date when the basis is added to the application?

With respect to this issue, what has caused confusion within the trademark community is the following two sentences from the decision:

There is no doubt a proper reading of that section [Section 16(2) of the Trade-marks Act] 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 trade-mark at the time of the application to rely on this section as a valid basis to obtain registration in Canada.

Further, the last portion of Section 16(2) of the Act, namely “unless at the date of filing of the application in accordance with section 30,” also supports the view that both Section 16 and Section 30 requirements must exist and be reviewed as at the date of filing of the application.

The difficulty with these sentences is that it is not clear if they are meant to address the situation where the use and registration abroad basis is added to the application after the filing date, as these were not the facts before the judge. If this decision means that there must be use prior to the filing date, regardless of when the basis is introduced into the application, then this is a significant departure from the prevailing view held by many prior to the decision. Moreover, this interpretation potentially renders a significant number of pending applications vulnerable to invalidity attacks in opposition proceedings.

The other possible interpretation is that this decision addresses only the situation where the use and registration abroad basis for registration is included at the time of filing. Under this interpretation, Canadian law remains unchanged.

An appeal has just been filed with the Federal Court of Appeal. It is likely that a decision in the appeal will be rendered in approximately 8 to 12 months.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2013 International Trademark Association