Publication
title
The Importance of Applying to Register a Trade-mark Sooner Rather Than Later
DATE
June 1, 2005
EXPERTISE
Somehow, your marketing people were a bit dilatory. You've been using your trade-mark for some time, but they did not file an application to register it. On the other hand, your competitor, who has not even started using his mark, has just filed an application. What can you do? You remember the last time you had to oppose a trade-mark application, and a cold sweat builds on your forehead at the thought of the costs and delays. You're not happy, you give your marketing people a piece of your mind. They assuage you by immediately filing an application to register your trade-mark based on your date of first use. You think the problem is resolved: shouldn't the Trade-Marks Office block your competitor's application? After all, your date of first use is prior to his (his application is only based on proposed use). Shouldn't you be able to avoid an opposition? Think again.
The latest word from the Federal Court of Appeal on this issue is clear: if you want to save expenses and have the Trade-Marks Office help you by objecting to applications for confusingly similar marks with a date of entitlement (i.e., proposed use) subsequent to yours (i.e., prior actual use), you need to file an application before the confusingly similar mark is applied for.
In its May 10, 2005 decision rendered in Canada (Procureur général) c. Effigi Inc.[1] the Federal Court of Appeal unanimously confirmed the Federal Court's decision to overrule the Trade-Marks Office's objection[2] to the application to register the trade-mark MAISON UNGAVA (filed on December 19, 2000 based on proposed use in relation to linens) which objection was based on a subsequently filed application claiming use going back to 1981 for the trade-mark UNGAVA in relation to the same type of wares.
In so doing the appeal court remarked:
[Translation]
"[9] [.] section 37 is a complete code which governs the procedure surrounding an application to register a trade-mark. The Registrar is vested with considerable power, namely, that of summarily dismissing an application. The legislator has seen fit to control this power and to limit it to those cases where the application fails to meet the requirements of section 30, which are of a more procedural, rather than substantive nature, and which bear on the registrability of a trade-mark (an implicit reference to section 12) and on non-entitlement to registration (not for the reasons set out in section 16, but solely on the basis of confusion with a mark in relation to which an application has already been filed). Had the legislator intended prior use to ground a section 37(1)(c) claim for confusion, it could easily have adopted the language of section 16(3)(c).
[.]
[11] Counsel for the Trade-Marks Registrar made much of the importance that should be attributed to prior use in the context of the protection of trade-marks. This importance is in no way diminished by requiring a subsequent applicant who claims prior use on the basis of a simple allegation [.] to establish his right through an opposition proceeding and the more complete evidence required in the context of such a proceeding."
The Court thus stressed that the owner of the trade-mark UNGAVA could still file an opposition (but at a cost.).
This decision reinforces the importance of Canada's trade-mark registration system, which confirms rights acquired through use, but which also provides registrants with the opportunity to "reserve" a trade-mark - why should such a reservation system be denied on the mere basis of another party's unsubstantiated allegation in a trade-mark application that his date of first use is earlier? Better to leave that to an opposition proceeding where this question can be determined in light of the evidence adduced by both parties.
The moral of this story: file your trade-mark applications sooner rather than later and save some money!
The purpose of this document is to provide information as to developments in the law. It does not contain a full analysis of the law nor does it constitute an opinion of Ogilvy Renault or any member of the firm on the points of law discussed.
[1]. (2005) CAF 172 Décary, Létourneau and Pelletier JJ.A. This decision is available in French only.
[2]. The Trade-marks Registrar has since issued a practice notice confirming the change in his practice pursuant to the Effigi decision (http://strategis.ic.gc.ca/sc_mrksv/cipo/tm/tm_notice/tmn2005-05-19-e.html).
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