Confirmation of the First-to-File Advantage

Tue, 8 Nov 2005 18:34:00 EST

"A recent Federal Court of Appeal decision in Canada (Attorney General) v. Effigi Inc., 2005 FCA 172, has confirmed the importance of filing as early as possible trademark applications that are based on first use of the trademark in Canada. The decision has the effect of changing the examination practices of the Trade-marks Office that have been in place for the past 50 years."

"To be registered in Canada, the trademark must not be confusingly similar to any trademark registrations or pending applications. Where two or more co-pending trademark applications are considered confusingly similar, the Trade-marks Registrar has historically approved for publication the application that claims the earliest rights, which stem from the earliest of either the application filing date (or priority filing date) or the date of first use of the trademark in Canada."

"Before the Effigi decision, this meant that an earlier-filed application based on proposed use in Canada (where use is intended in the future but has not yet occurred) would be rejected in favour of publication of a later-filed application based on use in Canada if the date of first use of the mark in the later-filed application preceded the filing date of the earlier-filed application. The applicant of the later-filed application was not required to provide evidence of the claimed date of first use. If the applicant of the proposed-use application was unable to satisfy the Registrar that the marks were not confusing, the only recourse was to commence opposition proceedings against the later-filed application to establish that the mark should not proceed to registration (on the basis of an incorrect date of first use, among other grounds). This practice has been significantly altered by Effigi."

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