Court Clarifies Requirements For Trade-Mark Filing Based On Registration And Use Abroad

Introduction

The recent Federal Court decision in The Thymes, LLC v. Reitmans (Canada) Limited has clarified one of the issues that had divided the Canadian intellectual property community with respect to trade-mark applications which are filed based on registration and use abroad. Unfortunately, this decision has also created a great deal of uncertainty on a related issue.

By way of background, the Canadian Trade-marks Act (the Act) permits an applicant for registration of a trade-mark in Canada to base its application on one or more of the following bases: (1) use of the mark in Canada; (2) proposed use of the mark in Canada; (3) making known of the mark in Canada; and (4) registration and use abroad.