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 Use
It or Lose It!
Marina Stipanac
Even I, a not-very-gracefully-ageing
woman who prefers letting nature take its course, know that
with a little help from BOTOX, you can fool the rest of the
world and shave off a few years from everywhere but your Birth
Certificate. Although use of the products and procedures under
this mark would be utterly justified in my case, this is not
what excites me about BOTOX. What does excite me is the fact
that our long standing cautionary advice to clients has been
validated; foreign use and registration basis in a Canadian
trademark application should only be claimed if the mark was
in use in the foreign country as of the Canadian filing date.
The Canadian Trade-marks Opposition Board
recently published a decision that supports the practice of
those Canadian firms who have been advising their clients not
to include foreign use and application/registration basis at
the time of filing a Canadian application unless both
conditions were met as of the filing date.
Allergan Inc. (“Allergan”), is the owner of the
trademark BOTOX, used for different therapeutic treatments,
and BOTOX COSMETIC, used for aesthetic applications. Lancôme
Parfums and Beauté & Cie (“Lancôme”) filed a Canadian
trademark application to register the mark MYOTOX in
association with a variety of cosmetic products. They based
their application upon use and application of the mark in
France.
Allergan opposed the registration of the
trademark MYOTOX on a number of grounds, one being that the
mark MYOTOX was either not in use in France, or was abandoned,
at the time of filing the Canadian application. Lancôme filed
no evidence of use in France, or in any other country, of
their MYOTOX mark. As a result, the Opposition Board refused
the application for MYOTOX on the grounds that the Applicant
did not fulfill the requirements of Section 30 of the
Trade-marks Act.
The present case confirms that the material
date for determining whether requirements of Section 30 of the
Canadian Trade-marks Act are fulfilled is the date of filing
the application or the filing date of the priority
application, if applicable.
This does not mean that the basis of foreign
use and application/registration cannot be added to the
application after the filing date, provided a mark was in use
in a foreign country prior to the filing of the Canadian
application, and that information was not available to the
Canadian agent at the time of filing.
This decision is welcomed by our firm,
confirming our long standing cautionary advice to clients that
the mark should be in use in the foreign jurisdictions before
claiming foreign use and application/registration basis at the
time of filing in Canada.
Allergan Inc. v. Lancôme Parfums and Beauté
& Cie, General Partnership, 64 C.P.R. (4th) 147 (T.M.O.B.).
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