There are two situations where trademark priority is important to applicants in Canada. The first situation is about who has a filing date priority. The second situation is who has superior title to a trademark based on use in Canada.
Who has trademark priority?
A. The first person to apply to register in Canada? (i.e. Canadian application date July 1, 2016)
B. The first person to apply for a trademark registration in the world within the prior 6-months and claims its priority date in its Canadian application? (i.e. USPTO application date May 1, 2016 and its Canadian application date August 1, 2016.)
The answer is B: The first person to apply for a trademark in the world and claim that priority date within 6-months in its Canadian application.
The priority date for a trademark application is the date that the application was previously filed in a country of the Union of the Paris Convention within the past six months, if claiming the priority date in another country of the Union for industrial designs and trademarks, under part C of Article 4.
In the CIPO Trademarks Examination Manual, it discusses trademark priority in terms of dates of entitlement.
As previously discussed in section III.6 of this Manual, in view of Attorney General of Canada v. Effigi Inc. (2005), 41 C.P.R. (4th) 1, the date of first use is not a relevant consideration pursuant to paragraph 37(1)(c) of the Trade-marks Act in determining if the applicant is not the person entitled to registration of the trademark because it is confusing with another trademark for the registration of which an application is pending.
If the application bearing the later filing date discloses an earlier priority date in association with the same or similar goods or services, then it will be considered to be the entitled application regardless of an earlier date of first use or making known, as shown in the following example:
- Applicant: XYZ Company
- Mark: AJAX
- Goods: motor trucks — used in Canada since at least November 1992
- Filed: September 17, 2005
- Applicant: ABC Company
- Mark: AJAX
- Goods: motor-driven vans — registration and use abroad
- Filed: December 1, 2005
- Priority Date: August 3, 2005
In the above case, ABC Company is entitled to registration since the priority date of August 3, 2005 is earlier than the date of filing of the application by XYZ Company.
Who has trademark priority?
A. The first person to apply to register? or
B. The first person to use a trademark or trade name in Canada?
The Supreme Court of Canada decided this issue in Masterpiece Inc. v. Alavida Lifestyles Inc., 2011 SCC 27
The answer is B: The first person to use a trademark or trade name in Canada
In the Masterpiece case, Masterpiece Inc used its trade name Masterpiece before Alavida Lifestyles applied to register its proposed trademark. Masterpiece Inc won the case at the Supreme Court of Canada.
Masterpiece Inc. and Alavida Lifestyles Inc. (“Alavida”) are both involved in the retirement residence industry. Since 2001, Masterpiece Inc., operating in Alberta, has used several unregistered trade‑marks, including “Masterpiece the Art of Living”. Alavida, operating in Ontario, entered the market in 2005 and applied to register the trade‑mark “Masterpiece Living” on December 1, 2005 on the basis of a proposed use. Alavida began using this trade‑mark in January 2006. Shortly after Alavida’s application, Masterpiece Inc. also began using “Masterpiece Living” and applied to register it and the word “Masterpiece” as its trade‑marks in 2006. Because of Alavida’s prior application, which was eventually granted, Masterpiece Inc.’s applications were denied. Masterpiece Inc.’s subsequent application to expunge Alavida’s registration was dismissed by the trial judge who concluded that there was no likelihood of confusion between Alavida’s and Masterpiece Inc.’s marks. That decision was upheld on appeal.
Held: The appeal should be allowed and Alavida’s registration should be expunged.
While a trademark registration is very useful, the first user of a trademark has superior rights to the trademark. : Rights are granted to the first user of a trade‑mark in two ways under the Act. First, under s. 16, a party normally gains a priority right to register a trade‑mark when it first uses that trade‑mark. Second, a user is also able to oppose applications, or apply to expunge registrations based on its earlier use of a confusing trade‑mark. Section 16(3) of the Act recognizes the right of a prior user against any application for registration based upon subsequent use.