Possible Pitfalls in Claiming “Use and Registration Abroad” for Foreign Trade-mark Applicants

A recent Federal Court decision, The Thymes, LLC v. Reitmans (Canada) Limited 2013 FC 127 suggests that in order for a claim of “use and registration abroad” to be valid in a trade-mark application, the Applicant must have used its mark in its country of origin as of the Canadian filing date.  This decision is notable for two reasons:  first, it incorrectly suggests that the foreign use of the mark must have taken place in the Applicant’s “country of origin”; second, it suggests that in order for such a claim to be valid, the foreign use of the mark must have commenced as of the Canadian filing date, regardless of when the claim is made.  Neither the Trade-marks Act, nor the Regulations contain such requirements. Moreover, there is no definitive case law indicating that there must have been use prior to the Canadian filing date.  Indeed, the Regulations permit the inclusion of a “use and registration abroad” claim after the filing date, provided the claim is made before the application is advertised in the Trade-marks Journal.  

It has been standard practice to add a claim of “use and registration abroad” as soon as mark has been used in another jurisdiction, even if this use is subsequent to the Canadian filing date. The Thymes decision has now called this practice into question.

Take-away: Until the Thymes decision is clarified, there is a risk that an application which claims “use and registration abroad” may be successfully challenged in opposition proceedings if the foreign use of the mark did not commence as of the Canadian filing date in the Applicant’s country of origin.  For this reason, the most prudent approach may now be to include such a claim only if both of these requirements are met.

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