Thyme For A Change?

Canadian trademark applications must identify a filing ground, the most common of which are (1) use in Canada, (2) proposed use in Canada, and (3) use and registration abroad. The latter, set out in section 16(2) of the Trade-marks Act (the Act), is widely used by non-Canadian applicants, since it permits applicants to register their marks before use in Canada has commenced. However, there must be use somewhere, at the time that ground is asserted in an application, to support that ground. The registration (or application) relied upon must be in the applicant's country of origin, referred to here as "home registration."

A recent decision, The Thymes, LLC v. Reitmans (Canada) Limited 2013 FC 127, has found that reliance upon a home registration and use abroad requires use at the Canadian filing date and that the use must be in the applicant's country of origin. The decision is now the subject of comment and debate particularly on the applicability of the decision to applications that are amended after filing to add a claim under section 16(2) (e.g., to supplement an application initially filed only on the basis of proposed use in Canada).

In the case before the Federal Court of Canada (the Court), the application was filed with a claim to a home registration and use abroad, even though there had apparently not been any use anywhere at the time the application was filed. The opponent alleged that the application was not in compliance with the Act, and both the Opposition Board and the Court agreed. On the facts, the decision is clearly correct, since a mark must be used to support this ground. However, the Judge's comments are not restricted to those facts. Instead, under the heading "Was Use of the Applicant's THYMES Mark in the United States Required as of the Filing Date of the Application in Canada?", the Judge stated that there is "no doubt a proper reading of the section requires that, at the time of filing the application, if an applicant relies upon registration or application and use abroad pursuant to that section [s. 16(2)], there must have been use of the trademarks at the time of the application to rely upon this section as a valid basis to obtain registration" (emphasis added). The Judge then went on to say that it is "clear" that use of the mark in the country of origin is a requirement for registration in Canada.

Those comments are surprising for two reasons. The Judge's most noteworthy statement relates to the date of use...