Under the amended Trademarks Act after June 17, 2019, the rules for determining priority have been changed because of the elimination of filing grounds. An applicant who has applied is entitled, (subject to successfully completing opposition proceedings), to secure its registration unless at the filing date of the application or the date of first use of the trademark in Canada, whichever is earlier, it was confusing with:
(a) a trademark previously used in Canada or made known in Canada by any other person;
(b) a trademark in respect of which an application for registration had been previously filed in Canada by any other person; or
(c) a trade name previously used in Canada by any other person.
Before June 17, 2019, the date of entitlement varied depending on the grounds set out in the application. If the application was based on “use” or “making known”, the date would be the date of first use or making known. If the application was based on registration and use abroad or proposed use, it was the filing date of the application. Under this regime an adverse party would have a good idea of the date on which priority would be determined.
After June 17, 2019, claims relating to entitlement will continue to be considered during examination, in opposition proceedings and proceedings seeking to expunge a registration. Since an applicant is no longer required to specify a date of first use an adverse party must take care when raising entitlement because the priority date is not of record. The adverse party must attempt to determine the applicant’s date of first use independently by marketplace investigation. It would be problematic for an adverse party to raise priority only to discover the applicant was the first to use the mark.
If you have questions, please contact me at firstname.lastname@example.org.
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These comments are general in nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.