Noteworthy change for Canadian Trade-mark applications

If 2 applications are made by different entities for a confusingly similar trade-mark for similar wares or services, the first one to use that trade-mark is entitled to the trade-mark. That has not changed. What has changed is how CIPO (Canadian Intellectual Property Office) deals with this.

Until now CIPO would accept the application containing the earlier use date, and reject the other.

Due to a recent case, and a resulting practice notice, CIPO will not consider the first use dates - they will simply allow the first one to file, and reject the later filing (even if the later filing was used first and thus entitled to priority.) The entity with first use must then launch an opposition proceeding (which of course takes time and money) to request the rejection of the first to file trade-mark.

Thus it becomes more crucial to file trade-mark applications quickly. For example, any company that has been using particular branding but has not yet applied for a trade-mark should consider applying immediately. The cost of obtaing a trade-mark is small compared to the cost of opposition proceedings.

Read the CIPO practice notice