Canada's trade mark filing system requires an applicant to select one or more grounds of application, choosing from use or intent to use in Canada, use and registration abroad, and, in very rare cases, making known in Canada. For foreign applicants, a Canadian application based on registration in the applicant's country of origin ("home country") and use anywhere is particularly advantageous if use in Canada is expected to be delayed for several years. However, a recent Canadian Opposition Board decision reinforces the importance of claiming this ground only where the trade mark was in use at the date the claim was made. The decision leaves open the issue of whether it is possible to amend an application, after filing, to add a use and registration abroad ground, if there was use of the mark somewhere at the date the claim was made, but not at the filing date (or priority filing date).

The case in question is Allergan Inc. v. Lancôme Parfums and Beaute & Cie. Lancôme applied to register DERMOTOX for cosmetics, including various milks, creams, gels, oils, powders and make-up products, relying solely upon use and registration in France. There was no claim of proposed use in Canada. Convention priority was claimed, giving Lancôme the benefit of its French filing date for priority purposes in Canada. Allergan opposed, relying mainly on confusion with its BOTOX® family of marks, as well as several technical grounds, including that the application did not comply with the Act, in that the trade mark had not been used on the wares in France, or elsewhere, at the filing date of the application.

While finding against Allergan on the confusion claim, the Hearing Officer did find for Allergan on the technical non-compliance ground, holding that Lancôme had not shown (and indeed, did not even attempt to show) use of the mark in France or elsewhere at the priority filing date of the application. The Hearing Officer therefore found for Allergan on the basis of Lancôme's failure to prove use at the priority filing date.

It is a fairly common practice to file on the basis of proposed use in Canada, and to amend later to add the use and registration abroad claim, once use has started. Assuming that the use abroad occurred after the Canadian filing date (or priority date, whichever is earlier), the question is whether the Lancôme decision makes this a risky practice. This point has not yet been decided, but is seems reasonable to expect that if an application was originally validly filed (this was not the case in Lancôme), e.g. by including a "proposed use in Canada" ground, it should be possible to amend the application after filing to add a use and registration abroad claim even if the use occurred after the Canadian filing or priority date. The reason for this is that (a) the application initially was filed validly based on proposed use in Canada, (b) such an amendment is permitted under the Rules, and (c) there is no ground of expungement that applies to a registration issued from such an application (assuming of course the absence of fraud). Further, there is no prejudice to any third party, since such an amendment does not alter the relevant priority dates between competing applicants. Instead, the original filing date will remain pertinent for the assessment of rights. However, until this issue is specifically litigated and addressed by the courts, it is recommended that the "proposed use in Canada" ground not be deleted from the application until after the application has passed through the opposition period and has been allowed. That way, any potential invalidity of the use and registration abroad claim will still leave the applicant with a valid filing ground.

The following lessons can be taken from this decision:

  1. When acting for an applicant, remember that the exact filing ground is "use and registration abroad," and not merely "registration" abroad. Although the home application may still be pending when this claim is made, use must have occurred somewhere. Therefore, care must always be taken to make this claim only after verifying that the mark has been put into use on the pertinent wares/services. Note that while the Trade-marks Office requires submission of a certified copy of the home registration prior to advertisement of the application, it does not require proof of use as a prerequisite for advertisement.
  1. When acting for an opponent, remember that there can be fertile grounds for an opposition on technical grounds when a "use and registration abroad" claim is made. Particularly if the foreign registration contains many goods/services, the chances are that there will not be use on all.
  1. File with multiple grounds, if possible. The current caselaw suggests that an application based on multiple grounds may not be invalid where one of the grounds cannot be supported. Relying upon "use in Canada" or "proposed use in Canada" ground, where pertinent, may protect the mark even if "use and registration abroad" fails.