Section 16 of the Trade-marks Act provides three bases for registration of a trademark in Canada: use in Canada, registration and use abroad, and proposed use. The law regarding trademark applications based on registration and use abroad, under s. 16(2), has recently received attention from the Federal Court in The Thymes LLC v Reitmans Canada Limited, 2013 FC 127 (The Thymes), casting some doubt on widespread trademark practices in Canada.
Prior to The Thymes, trademark applicants in Canada have commonly amended trademark applications to include a s. 16(2) use and registration abroad basis once such use has begun anywhere else in the world. These amendments would occur after the filing date of the application, but before advertisement of the application, in accordance with the Trade-marks Regulations and the practice of the Canadian Intellectual Property Office (CIPO). The Trade-marks Act, Trade-marks Regulations, and CIPO guidelines are silent on when use abroad must have commenced.
The Thymes dealt with an application that was filed claiming use and registration in the United States as a basis for registration under s. 16(2). The application was opposed, and the initial decision by the CIPO’s Trademark Opposition Board refusing the trademark application was appealed to the Federal Court. On appeal, Justice Manson of the Federal Court affirmed the Opposition Board’s decision to refuse the trademark application on the basis that there had not been any use of the trademark in the United States as claimed at the time of filing the application. However, Justice Manson also stated that the requirements for filing under s. 16(2) “must exist and be reviewed as at the date of filing of the application” and that the foreign use of the trademark must occur in the applicant’s country of origin.
These statements have been met with some surprise among trademark practitioners in Canada, and are subject to potentially differing interpretations. With respect to the timing of foreign use of a trademark, it is possible that Justice Manson was merely reaffirming the status quo by requiring use abroad on the date that a s. 16(2) basis is introduced into the application – i.e. the trademark must be used abroad as of the Canadian filing date if the application is filed claiming use and registration abroad (as was the case with The Thymes). Under this interpretation, The Thymes might not adversely affect trademark applications that are amended after the filing date to include a s. 16(2) basis for registration claiming foreign use occurring after the Canadian filing date, and the case could be distinguished on the basis that use in the foreign country had occurred as of the date of amendment to add a s. 16(2) basis.
However, The Thymes can also be interpreted to hold that a s. 16(2) use and registration abroad basis can only be relied upon if the use abroad occurred prior to the Canadian filing date, even if the application is amended to include that basis after the filing date once such use abroad has commenced. This possibility introduces uncertainty into what has been a longstanding trademark practice in Canada.
In addition to the outstanding questions regarding the timing of foreign use for the purposes of s. 16(2), The Thymes also introduces some potential uncertainty where the use abroad is not in the applicant’s “country of origin”. While Justice Manson’s comment in The Thymes would suggest that use abroad must be in the applicant’s country of origin, the Trade-marks Act states only that the applicant must provide the name of “a country” in which the trade-mark has been used, and the CIPO’s longstanding practice is to allow any country (not just the applicant’s country of origin) to be named as the country of use when establishing a foreign use and registration basis. In practice, foreign use is overwhelmingly claimed in the applicant’s country of origin, but trademark practitioners are still well-advised to carefully consider the location of the foreign use that is being claimed, particularly in trademark applications which do not claim an alternative statutory basis for registration (such as use in Canada or proposed use).
The full impact of The Thymes may eventually become more clear as the courts have a chance to interpret the decision and provide guidance to trademark practitioners and applicants. However, we may have to wait some time for clarification – an application for review of The Thymes decision to the Federal Court of Appeal was cancelled, as the parties have settled their dispute.
By Christopher C. Scott