Federal Court Clarifies When Use Must Commence for “Use in Canada” Filing Basis

In its decision in Les Marques Metro / Metro Brands SENC v 1161396 Ontario Inc. (2017 FC 806), the Federal Court (FC) confirmed that an applied-for trade-mark must have been used in association with each of the specific goods or services described in the application prior to the applicant’s filing date, even though dates of first use must be provided only for each general class of goods and services. The FC rejected the Applicant’s argument that use only needed to commence for each general class of goods.

Before the Registrar, the Applicant made an unsuccessful request for an interlocutory decision striking the statement of opposition. As the statement of opposition alleged that the Applicant had not used its trademark in association with each of the goods in its application, the Applicant claimed that the Opponent had not properly pleaded its sole ground of opposition. The Applicant argued that subsection 30(b) of the Trade-Marks Act (Act) merely required the Applicant to prove use in association with the general class of goods described in its application, and not for each of the goods.

In the Opposition Board’s decision, the Hearing Officer refused to reconsider this interlocutory ruling on the basis that the Registrar had not erred at law or in the appreciation of facts. The FC also found that this interlocutory decision was reasonable, and emphatically rejected the interpretation of subsection 30(b) as asserted by the Applicant. The FC stated that the Act “cannot reasonably be interpreted in a way that would allow [the Applicant] to circumvent the fundamental requirement of use…[and] cannot exploit section 30(b) of the Act in a way that would frustrate the underlying logic of the trademark registration bases scheme.”

The FC also confirmed that the Registrar had jurisdiction to issue split decisions in opposition proceedings.

Summary By: David Bowden