Federal Court

The Federal Court of Appeal has handed down a decision in the Attorney-General of Canada v. Effigi Inc. case on May 10, 2005 which has an immediate impact on Canadian Trade-mark Practice at the examination stage.

Effective immediately, the first filed application or the application with the earliest priority filing date will be approved for advertisement regardless of any subsequently filed application(s) claiming better rights as a result of use or making known in Canada. All pending applications which have not yet been advertised are subject to the new practice.

This narrowing of the assessment of entitlement to registration will likely result in faster prosecution of trade-mark applications through examination. As the examination will not take into account later filed applications with potentially better rights, the new Office Practice will likely result in more opposition proceedings. This decision of the Federal Court of Appeal has NOT changed the assessment in Canada of who has the better rights in competing trade-marks but only prevents the Trade-marks Office from making such an assessment at the examination stage.

Accordingly, it is now more important than ever to ensure that Canadian trade-mark applications are filed as soon as possible. Please note that it remains necessary to claim use in an application in Canada if the trade-mark has been used in commerce. Canadian practice does not permit the amendment of an application from the basis of proposed use to use and failure to claim such use can be a ground to invalidate an application in opposition proceedings.

This significant change in Canadian Trade-mark Practice may alter trade-mark filing strategies that were previously recommended. Trade-mark applications that were filed after determining the presence of a competitor’s similar trade-mark on the register which claimed a prior date of entitlement will now receive a citation of the earliest filed application.

Should you have any questions, please contact us.