The Thymes case—two steps forward, one step back


Victoria Carrington

A recent case decided by the Federal Court of Canada in February this year has both clarified and clouded the issue of how to perfect the filing basis of use and registration abroad.

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.

Thymes, Reitmans, Federal Court of Canada, Canada Trade-marks Act