Consultation Period Opens Re. "Use and Registration Abroad" Claims
The Canadian Trademarks Office has announced a Consultation and Discussion Period expiring November 15, 2009 to review a Proposed Practice Notice intended to clarify the requirements for a complete section 16(2) (i.e. "Registration and Use Abroad") claim.
The proposal requires that a complete a section 16(2) claim by include:
- the particulars of the foreign application or registration of the trademark in or for the country of origin of the Applicant; and
- the name of a country in which the trademark has been used as of the date of filing in Canada
If an incomplete section 16(2) claim is included in an application but the case is otherwise in a position for advertisement, the application will proceed to advertisement in the Trade-marks Journal without the section 16(2) claim and without providing formal notice to the Applicant, save for the Approval Notice. As readers know, a section 16(2) claim may not be added to the application subsequent to advertisement.
The Trademarks Office has indicated that an Applicant may add or complete a section 16(2) claim "prior to the decision of the Registrar to advertise the trademark". (It is unclear, however, whether the "decision of the Registrar to advertise" in fact, refers to the actual advertisement of the mark or an arbitrary date prior to publication.)
The result of this proposal and particularly the immediate advertisement of the mark without completing the section 16(2) claim effectively denies the Applicant the present ability to complete the claim and to subsequently finalize the registration process based solely upon the section 16(2) claim(s) and thus such Applicants will be required to submit a Declaration of Use in circumstances where the Applicant has provided "proposed use" claims.
