For 'Use Abroad', Read 'Use Abroad Prior To Filing'

The recent case of The Thymes, LLC v. Reitmans (Canada) Limited 2013 FC 127 is the first decision at Federal Court level to uphold a ground of opposition based on section 30(d) of the Trade-marks Act, for failure to use the applied-for mark in a foreign country prior to filing an application in Canada, where the Canadian application relies on use and registration abroad as a basis for registration.

The decision confirms the long standing view among many trade-mark practitioners in Canada that use of the mark applied for must have taken place in another country of the Union prior to filing a Canadian application based on use and registration of that mark abroad. Maintaining the kind of sensible planning that many applicants have previously adopted will help to lessen any impact of the Court's decision, which now leaves no place to hide for applicants that file based on insufficient dates of use who are subsequently faced with a s.30(d) opposition.

The Federal Court's decision has highlighted the dichotomy between continuing to attract trade-mark applicants to Canada claiming prior use and registration abroad on the one hand, and paying heed to a fundamental tenet of Canadian trade-mark law on the other, and may eventually lead Parliament to address that dichotomy. In the meantime, it underlines the need for applicants to adopt a clear filing strategy that coordinates between Canada and any other jurisdictions in which corresponding trade-mark applications are being filed.

The applicant, The Thymes, LLC ("Thymes"), applied to register the mark THYMES & Design in Canada on March 30, 2005, on the basis of use and registration of the mark in the United States and proposed use in Canada. Thymes claimed priority to an earlier US application with a filing date of March 7, 2005. Reitmans (Canada) Limited ("Reitmans") opposed the application on various grounds, including failure to comply with section 30(d) and non-entitlement under section 16(2) of the Trade-marks Act.

Section 30(d) of the Act requires that:

30. An applicant for the registration of a trade-mark shall file with the Registrar an application containing

(d) in the case of a trade-mark that is the subject in or for another country of the Union of a registration or an application for registration by the applicant ... on which the applicant bases the applicant's right to registration, particulars of the application or registration and, if the trade-mark has neither been used in Canada nor...