The proposed practice notice entitled “Use and Registration Abroad (s.16(2) of the Trade-marks Act)” has been withdrawn by CIPO.   The proposed practice notice caused concern as it purported to make two significant changes to the application of Section 16(2) of the Trade-marks Act (the “Act”).  First, it stipulated that the Canadian application filing date is the relevant date for establishing use of a mark in a foreign country.  Second, it limited the applicant’s ability to include or complete a Section 16(2) claim to the date of approval for publication, rather than the date of advertisement of the application.

The proposed practice notice appears to have been drafted in response to the Opposition Board decision in Allergan Inc. v. Lancôme Parfums and Beauté & Cie, 64 C.P.R. (4th) 147, which has been interpreted by some as imposing the requirement that a mark must have been used abroad “as of the date of filing in Canada” in order for a Section 16(2) claim to be valid.  However, in the Allergan case the applicant did not file any evidence of use whatsoever,  nor were there any arguments filed with respect to this issue.   The Hearing Officer simply stated that the material date for considering Section 30 grounds of opposition is the filing date of the application.  Therefore, the matter has not been fully analyzed by either the Trademarks Opposition Board or the Federal Court, and the relevant sections of the Act make no mention that foreign use as of the Canadian filing date is a requirement.

If  an Applicant asserts “use and registration abroad” in the original application, it follows that use of the mark must have commenced as of the Canadian filing date.  However, if a Section 16(2) claim is added after filing, or if the applicant asserts a foreign application rather than a registration (and must therefore “perfect” the claim by filing proof that the application proceeded to registration abroad), then arguably use of the mark may occur after the Canadian filing date, or in other words at the time that the foreign “registration” is asserted.

FICPI and IPIC were amongst those who submitted comments with respect to the proposed practice notice.