Major changes to the Canadian Trademarks Act are expected to be implemented in 2019, including the removal of “use” as a registration requirement. Until then, trademark applicants must select a filing basis for their application which can include, inter alia, use in Canada.
The Trademarks Act specifies that a trademark application based on use in Canada must contain the date of first use for “each of the general classes of goods or services described in the application”. The Federal Court has recently clarified in Les Marques Metro that in order for such a claim to be valid, however, the trademark must have been used in association with each of the specific goods or services identified in the general classes set out in the application before the application filing date.
The definition of “general classes” is a matter of debate for trademark professionals. In Les Marques Metro, the Court did not provide guidelines for the interpretation of this term, but did clarify that “general classes” should not be equated with international classes under the Nice Classification system.
Until the Act is amended, a trademark applicant will need to prove in opposition proceedings that the trademark has been used in association with at least one specific good or service in each general class identified in the application since the date of first use claimed, as well as establish that it has used the trademark in association with the remaining specific goods and services since before the filing date of the application.