Important Decision May Impact Canadian Trade-Mark Filing Requirements For Applications Based On Foreign Use And Registration

In a recent decision of the Federal Court of Canada, the Court has ruled on an issue that has been uncertain for decades.

A Canadian trade-mark application must include at least one valid basis for registration. The three most common bases are (1) proposed use in Canada, (2) prior use in Canada, and (3) registration (or eventual registration) in the home country and use anywhere.

With respect to the foreign use and registration filing basis, the Canadian Trade-marks Office, consistent with the Trade-mark Regulations, has allowed applicants to include this basis any time before the Canadian application has been advertised for opposition purposes. Moreover, there has never been a definitive decision as to whether there must have been "use" prior to the Canadian filing date.