Trade-marks Office Clarifies Priority Claim Procedures

On September 3, 2010, in News, by Paula Clancy

The Canadian Trade-marks Office issued a new Practice Notice on September 2, 2010 which clarifies the procedure for making priority claims in a Canadian trade-mark application.  A priority claim may be made within a period of six months after the date on which the earliest application was filed for the registration of the same or substantially the same trade-mark for use in association with the same kind of wares or services.    The trade-mark need not be identical for the purposes of making a priority claim.  The Act permits a priority claim based on a trade-mark that is substantially the same. A priority declaration may be filed in one of the following ways:

  1. by including the declaration in an application as originally filed, provided that the subsequent application is filed within the above-noted six-month period;
  2. by amending an application to include the declaration, provided that the amendment is made within the six-month period;
  3. by filing a separate declaration in respect of an application at any time within the six-month period.

The Trade-marks Act does not require that the number of the earlier application be included in the priority claim.   Nonetheless, the Office has determined that this information should be available to the public.  Therefore where a priority declaration does not include the number of the earlier application, the Office will require the applicant to either provide the Office with the number or submit a certified copy of the earlier application.

If an error is made with respect to the date or country of filing of the earlier application, the error may be corrected at any time within the six-month priority period. After this period,  no amendment will be permitted to the date or country indicated in the declaration on the basis that such an amendment would be inconsistent with the Act.

If an error is made with respect to the number of the earlier application, such error may be corrected at any time before registration of the mark.

Finally, there is no requirement that the specific wares or services in respect of which priority is claimed by identified in the priority declaration.  The Office deems it to be sufficient if the declaration indicates that the priority application was filed for use in association with the same kind of wares or services.   If, however, an applicant chooses to limit the priority declaration to wares only or to services only, changes to these limitations may only be made within the six month priority period.  After the expiry of the six-month period, no amendment to remove any such limitation will be permitted since it would be considered to be the making of a new priority declaration outside of the time limits permitted by the Act.

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