The Canadian Federal Court has confirmed that a registration cannot be invalidated merely on the basis that a claim for foreign use of a mark was made subsequent to the Canadian filing date. As noted in our earlier post entitled “Possible Pitfalls in Claiming Use and Registration Abroad for Foreign Applicants”, the Thymes decision of the Opposition Board created considerable uncertainty as to whether foreign use and registration claims were valid if the foreign use of the mark did not pre-date the Canadian filing date.
In Coors Brewing Company v Anheuser-Busch LLC (2014 FC 716) the Federal Court considered an application by Coors to expunge a trademark registration owned by Anheuser-Busch. Coors argued that Anheuser-Busch’s registration was invalid since use of the mark commenced in the United States after the Canadian filing date. The Federal Court dismissed the expungement proceedings noting that non-compliance with procedural filing requirements was not a ground for expungement.
Anheuser-Busch had initially filed the application based on proposed use in Canada, but later amended the application to add a claim of use and registration in the United States. At the time Anheuser-Busch made the claim, there was no misstatement, and therefore Coors’s request to expunge the registration was dismissed.
The Coors decision is the first to deal with a claim asserting invalidity based on the amendment after filing to claim foreign use and registration, and gives trademark owners a degree of comfort in knowing that a registration will not be invalidated based on that practice so long as the claims were true when made. It remains unclear, however, whether this would still constitute a valid ground of opposition.