The Thymes They Are A Changin’

Canadian trademark applications must identify a filing ground, the most common of which are (1) use in Canada; (2) proposed use in Canada; and (3) use and registration abroad. The latter, set out in section 16(2) of the Trade-marks Act (the “Act”), is widely used by non-Canadian applicants, since it permits applicants to register their marks before use in Canada has commenced. The registration (or application) relied upon must be in the applicant’s country of origin, referred to here as “home registration.”  Until recently, there had been a widespread and long-followed practice to amend applications after filing to include use and registration abroad, once use commenced somewhere - anywhere.