"First-to-File" Rule in Canada at the Trade-Mark Examination Stage

In response to the recent Federal Court of Appeal decision in Procureur Général du Canada v Effigi Inc, 2005 CFA 172, the Canadian Trade-marks Office announced on May 19, 2005 that it will immediately change its practice in examining competing applications with reference to issues of entitlement. Contrary to its past practice, the Office will no longer consider the date of first use or making known when determining who should be entitled to registration of a trade-mark. When pending marks are confusing, the application with the earlier filing date or priority date will always be approved for advertisement over the later filed application. The facts in the Effigi case are not unique. On December 19, 2000, Effigi Inc (Effigi) filed an application to register the mark MAISON UNGAVA for bed linens, on the basis of "proposed use in Canada". On October 19, 2001, Tricorn Investments (Tricorn) filed an application to register UNGAVA for similar goods, but claimed use in Canada since 1981. The Registrar rejected Effigi's application because its filing date was subsequent to Tricorn's claimed date of first use and Effigi was therefore not the person entitled to registration. Effigi appealed the Registrar's decision. On appeal, the Federal Court, Trial Division, overturned the Registrar's decision. Justice Shore held that during examination of competing trade-mark applications, the examiner should not take into account dates of first use claimed in applications which have not been substantiated. The only issue to be determined by the examiner at the examination stage is who filed the application first: who has the earlier filing or priority date. The question of entitlement based on dates of first use is one which is better left for opposition proceedings, where dates of first use can be proved under oath. On appeal to the Federal Court of Appeal, Justice Shore's ruling was upheld. The result of this decision effectively makes Canada a "first-to-file" system for trade-marks, at the examination stage. It is therefore more important that applications be filed as soon as possible, in order to ensure the earliest filing date, regardless of the date of first use. Moreover, applicants who have an earlier date of first use will wish to monitor competing applications so that they can oppose and prevent registration of any earlier filed applications. For a copy of the decision, see: http://decisions.fca-caf.gc.ca/caf/2005/2005caf172.shtml For a copy of the relevant Practice Notice of the Canadian Intellectual Property Office, visit: http://strategis.ic.gc.ca/sc_mrksv/cipo/tm/tm_notice/tmn2005-05-19-e.html Summary by: Hung Nguyen