Change in Basis of an Application from Reliance upon Proposed Use (Section 16(3)) to Reliance upon Registration and Use Abroad (Section 16(2)) after Advertisement or Allowance

Publication Date: 1985-01-02

The Office has taken the position that an applicant cannot be permitted to change the basis of its application from reliance upon proposed use to reliance upon registration and use abroad either after advertisement or after allowance for the following reasons:

  1. There is no provision in the Trade Marks Act for re-advertisement. This would result in the opposition proceedings, which are an integral part of the procedure, becoming unavailable and a person who would wish to file an opposition in view of the change in basis in an application would be deprived from taking advantage of this procedure.
  2. Section 36(1) permits the Registrar to reject an application if it does not comply with the provisions of Section 29 or the applicant is not a person entitled to registration. Section 29 requires a person relying on use and registration abroad to set out the particulars of such registration and use in his application. Thus, a determination in this regard under Section 36 can only be made at the point of advertisement. Also, in support of this claim Section 30(1) of the Act requires that a copy of the corresponding foreign registration must be filed before advertisement (see McDonald's Corp. v. Deputy Attorney General of Canada, (1977), 31 C.P.R. (2d) 272.) Therefore, such an amendment would be contrary to Section 30(1) of the Act.
  3. To permit such an amendment after allowance would be contrary to Sections 39(2) and (3) of the Act on the basis that the provisions of Sections 39(2) and (3) are mandatory and the Registrar must proceed accordingly.

The basis for refusal of such an amendment is Section 30(1) in both cases and, in addition, Sections 39(2) and (3) where the trade mark has been allowed. Further, failure to file a declaration of use with respect to a proposed trade mark which has been allowed will result in the application being deemed to be abandoned under Section 39(3).