As a result of a landmark decision rendered by the Federal Court of Appeal on May 10, 2005, the claimed date of first use or making known of a trademark in Canada is no longer a factor to be considered by Examiners in deciding the priority of co-pending applications (during prosecution, as opposed to opposition).
In Attorney General of Canada v. Effigi (2005 FCA 172), the Federal Court of Appeal overturned the longstanding Canadian practice of determining the priority of applications based on the earliest of: the date of first use or making known in Canada, the date of filing in Canada, or the date of filing of the Paris Convention priority application. Now, regardless of any prior use or making known in Canada, the application with the earliest Canadian or priority filing date will proceed.
Consequently, the filing of any applications in Canada should not be delayed, even if there is prior use in Canada. Additionally, Applicants should claim priority pursuant to the Paris Convention, even if there is earlier use in Canada.
It is important to understand that this change in practice – which has already been adopted by the Trademarks Office as a result of this decision – does not alter substantive trademark law in Canada in any manner. Canadian trademark law (unlike examination procedure) has not adopted a first-to-file system. Thus, if a party has a date of first use or making known in Canada that predates the filing date of another confusing application, the ability to oppose an application or to expunge a registration based upon such rights has not been changed. Indeed, this will undoubtedly lead to an increased number of oppositions being filed in Canada, as well as a greater need to monitor co-pending applications.
This change has resulted in Canadian Trademarks Office practice being similar to that of the United States. In particular, the date of first use or making known will now need to be proven by evidence in opposition proceedings, rather than being merely accepted without proof as accurate by an Examiner.
Mark K. Evans, Toronto