Canadian Trademark Practice Change - First to File for Examination Purposes

I just received an urgent alert from one of our Canadian trademark associates, Ridout & Maybee, about a significant change to Canadian trademark practice. 

According to their memo – the Canadian Federal Court of Appeal handed down a decision on May 10, 2005 in Attorney-General of Canada v. Effigi In., (French appellate opinion and English trial court opinion) holding that Canada is a “first to file” country with respect to trademark examination.

“In other words, for examination purposes, where there are confusingly similar marks which are the subject of co-pending Canadian applications, the Canadian Trademarks Office need look only at the filing or priority date of the application.  The first one filed will be approved for advertisement, irrespective of any dates of Canadian use set out in the applications.  This change in Canadian practice takes place immediately.”

It is important to note that this change is only for purpose of examination – after examination, later filed marks that have earlier use dates can still be used to challenge the earlier filed mark in an opposition proceeding.

“This decision makes it clear that it is in opposition proceedings, and not at the examination stage, where the party with the earlier Canadian use date (but later filed application) can prevail.  Thus, we expect faster prosecution of trade-mark applications but increased numbers of oppositions in Canada.”

Thank you to Ridout & Maybee for the information.