Use in Canada, get it before it’s gone: Federal Court provides clarity on claiming use

The Federal Court of Canada has provided some clarity on claiming use in Canada as a trademark filing basis, although some ambiguity remains. Ironically, this comes just as Canadian trademark law is on the cusp of a fundamental change (expected to be implemented in early 2019) to do away with use as a requirement for trademark registration.  

Under the existing Canadian trademark system, applicants can base their trademark applications on any one or more of the following bases:

• use in Canada;
• proposed use in Canada;
• use and registration abroad; and
• making known in Canada.

In Les Marques Metro/Metro Brands SENC v 1161396 Ontario Inc (2017 FC 806 per Annis J) the Federal Court clarified that in order to base an application on use in Canada pursuant to Section 30(b) of the Trademarks Act, applicants must satisfy two requirements:

• They must specify in the application the date(s) of first use in association with each of the general classes of goods or services; and
• They must have used the mark in Canada in association with all of the goods or services covered by the Canadian use claim(s) as of the Canadian application filing date.

While it has always been prudent practice to ensure that the mark has been used for all of the goods or services in an application filed on the basis of use in Canada, there is now an unambiguous pronouncement on this point from the Federal Court. As Justice Annis stated at Paragraphs 56-57 and 61 of the decision:

"Subsection 30(b) of the Act reveals two requirements: (1) that the trade-mark application be for a trade-mark that has been used in Canada; and (2) that the application contain the date of first use for each of the general classes of goods or services described in the application. These requirements are readily apparent from a plain reading of subsection 30(b):…

The Act is clear that only a date of first use of the Mark in association with each general class of goods or services must be provided – i.e. the second requirement. However, an ambiguity remains with regards to the first requirement: does the Act’s first requirement that the application be based on use of the trade-mark in Canada imply that all goods in the application must have been used as of the relevant date? … [T]he Court must answer this question in the affirmative...

It is the Court’s view that while subsection 30(b) of the Act merely requires that a date of first use be provided with regards to each general class of goods or services, the applied for trade-mark must nevertheless have been used in association with each of the specific goods or services identified in the general class prior to the applicant’s filing date." (Emphasis added.)

The relevant date referred to by Annis above – specifically, the date by which all of the goods or services covered in the application under the Canadian use claim(s) must have been used – is the filing date of the Canadian application. This is a helpful clarification, since many practitioners have understood that for the purposes of opposing based on Section 30(b) of the act (namely, that the mark has not been used for the specific goods or services since the date of first use claimed in the application), the applicant must have used the mark for each of the specific goods or services covered by the use claim since the claimed date of first use in Canada. 

In an opposition proceeding, the applicant would still, presumably, be required to demonstrate use with at least one of the specific goods or services in the general class as of the date of first use claimed in the application, but for the remaining goods or services in that general class, it would seemingly suffice to demonstrate use of the mark any time up to the application filing date.

The policy behind Annis’s conclusion that there must have been use of the mark for all of the goods or services in the Canadian use claim as of the filing date is that if an applicant were permitted to obtain a registration for the general class of goods or services, when there has not been use of the mark for each of the specific goods or services covered in the application under that general class, the result would be “absurd”. The applicant would be granted a certificate of registration on the basis of actual use when there was no actual use for all the listed goods or services.

However, there remains some ambiguity as to the exact meaning of “general classes of goods or services” in Section 30(b). Annis stated definitively that “general classes of goods or services” should not be equated with classes under the Nice Classification of goods and services. In other words, just because all of the applicant’s goods fell into Nice Class 9 (which includes goods as diverse as computer software, fire engines and sports goggles), this did not mean that all of these goods, even if they had all been used in Canada since the specified date of first use, would or should properly be considered to be in the same general class of goods for the purposes of Section 30(b). In addition, simply because goods or services were grouped together by the applicant separated by commas (as opposed to semi-colons) after “namely” (eg, clothing, namely, athletic clothing, action figure clothing, clothing belts and clothing buckles), this did not necessarily mean that the goods or services thus grouped would be determined by the registrar or the court to be in the same general class. However, the court offered no guidelines as to how “general classes of goods or services” should be interpreted, leaving it to future opposition proceedings, or appeals, to be determined. 

In addition to providing some clarity regarding Canadian use claims, Annis clearly stated that “split decisions” – where an opposition succeeds in connection with only some goods or services – are permissible under Section 38(8) of the act. Although there is nothing explicit within Section 38(8) suggesting that the registrar could decide to partially refuse an application or partially reject an opposition, in practice split decisions have been issued for more than 30 years. After a thorough analysis of Section 38(8), the object of the act (namely, “to maintain a proper balance between free competition and fair competition”), other policy considerations, Parliament’s intentions and case law, Annis concluded that the ability of the registrar or the court to issue split decisions is consistent with both the object of the act and policy considerations. Once the changes to the act come into force in early 2019, the registrar’s ability to issue split decisions will be expressly codified, removing any uncertainty about this practice.