The Thymes case—two steps forward, one step back

In Canada, applicants must identify one or more ground(s) on which they seek to rely for obtaining a trademark registration.

The most common filing bases are (1) use in Canada; (2) proposed use in Canada; and (3) use and registration abroad. The third ground is particularly advantageous for foreign applicants, as they are able to register their marks in Canada without using their mark there. However, since Canada’s trademark regime is based on use, there must be use of the mark somewhere in order for a Canadian registration to be issued.

Unfortunately, the wording of the relevant section of the Trade-marks Act (Section 16[2]) is not entirely clear with regard to where and when the use must take place, and although it dealt specifically with this issue, the decision in The Thymes, LLC v Reitmans (Canada) Limited 2013 FC 127 falls short of resolving the uncertainty once and for all. In fact, some of the court’s comments actually raise more questions than before.

The act states that an applicant “who has filed an application ... for registration of a trademark that is registrable and that the applicant ... has duly registered in or for its country of origin and has used in association with wares or services is entitled ... to secure its registration in respect of the wares or services in association with which it is registered in that country and has been used ...”.

From this it is clear that the home registration must be in the applicant’s country of origin. It is also clear that foreign use is required to support the ground. However, Canadian practice does not require all filing bases to be claimed at the time the application is filed. Applications may be amended after filing (before publication) to introduce additional filing bases, including use and registration abroad.

“THE REQUIREMENT FOR USE AT THE TIME OF FILING CASTS A BROAD ENOUGH NET TO INCLUDE FOREIGN USE AND REGISTRATION CLAIMS THAT ARE ADDED POST-FILING.”

In the absence of more specific direction in the act or regulations, the consensus has been that foreign use is required at the time the ground is asserted. Therefore if there is no use of the foreign mark at the time the application is filed in Canada, one waits to add the foreign use and registration claim until after the mark has been used abroad.

The Thymes decision throws considerable doubt on to this practice, since the manner in which the court ‘clarified’ the requirement for use at the time of filing casts a broad enough net to include foreign use and registration claims that are added post-filing. Moreover, the court seems to have added the further requirement, which is nowhere to be found in the act or regulations, that the foreign use must also be in the applicant’s country of origin. This latter comment is felt by many clearly to be incorrect.

Prudent counsel have always advised applicants to ensure their foreign mark has been used before relying on their foreign registration in a Canadian application—hence the practice of holding off on adding the foreign basis until use abroad has commenced. However, unless and until future jurisprudence addresses these wrinkles, this Federal Court case will likely guide the opposition board’s decisions.

An imperfect filing basis is a valid ground of opposition and an application can be successfully challenged on the basis that there was no use of the foreign mark at the appropriate time. Unfortunately, the Thymes case does little to assist us in unequivocally identifying what the appropriate time is, and is now also casting doubt on the appropriate place of use.

Thus, the most cautious approach now is to claim use and registration abroad only if the mark has been used in the applicant’s country of origin as of the filing date of the application in Canada.