Allergan v. Lancôme Decision Clarifies Foreign-Based Trademark Registrations in Canada

A recently published decision of the Trade-marks Opposition Board clarifies when a trademark applicant can claim use and application/registration in its country of origin as a basis for trademark registration in Canada under section 30(d) of the Trade-marks Act. To rely on this basis of registration, an applicant must be prepared to establish that the mark was in use in its country of origin (or elsewhere) at the time of filing the Canadian application.

In Allergan Inc. v. Lancôme Parfums and Beauté & Cie, Lancôme had applied to register the trademark MYOTOX for use in association with cosmetics. The sole basis for the application was Lancôme's use and registration of the trademark in France. Allergan opposed the application on the basis that, among other things, the mark was not in use in France or, alternatively, that the mark was abandoned.