September 2nd, 2010
In accordance with subsection 34(1) of the Trade-marks Act, in order for an applicant to make a claim of priority based on an earlier filed application, a declaration setting out the date and country of filing of the earlier application must be filed with the Registrar of Trademarks within a period of six months after the date on which the earliest application was filed for the registration of the same or substantially the same trademark for use in association with the same kind of wares or services. Such a priority declaration may be filed in one of the following ways:
- by including the declaration in an application as originally filed, provided that the subsequent application is filed within the above-noted six-month period;
- by amending an application to include the declaration, provided that the amendment is made within the six-month period;
- by filing a separate declaration in respect of an application at any time within the six-month period.
Should an error be made in a priority declaration concerning the date or country of filing of the earlier application, the Office will permit the declaration to be amended to correct the error at any time within the six-month period of time. After the expiry of the six-month period of time, no amendment will be permitted to the date or country indicated in the declaration since it is considered that such an amendment would be inconsistent with subsection 34(1) of the Act.
Subsection 34(1) of the Act does not require that a priority declaration include the number of the earlier application. The Office, however, considers that it is highly desirable for it to be able to make available to the public either the number of, or a copy of, the earlier application. Accordingly, where a priority declaration does not include the number of the earlier application, the Office will, pursuant to subsection 34(2) of the Act, require the applicant to either provide the Office with the number or submit a certified copy of the earlier application.
Should an error be made in indicating the number of the earlier application, the Office will permit the number to be corrected at any time before registration. (Since subsection 34(1) of the Act does not require the declaration to include the number, the Office considers that an amendment of the number is permitted by the applicant as of right in accordance with section 30 of the Trade-marks Regulations.)
For the purposes of the priority declaration referred to in paragraph 34(1)(a) of the Act, the Office does not consider there to be any requirement to identify the specific wares or services in respect of which priority is claimed. With respect to wares or services, it is sufficient if the declaration indicates that the priority application was filed for registration of the same or substantially the same trademark for use in association with the same kind of wares or services. If, however, an applicant chooses to limit the priority declaration to wares only, to services only, or to specified wares and/or services, the limitations to the wares or services covered by the priority declaration may be made at any time within the above-noted six month period. After the expiry of the six-month period, no amendment to remove any such limitation will be permitted since this would be considered in substance to be the making of a new priority declaration outside of the time limits permitted by paragraph 34(1)(a).
Note: This practice notice is intended to provide guidance on current Trademarks Office practice and interpretation of relevant legislation. However, in the event of any inconsistency between this notice and the applicable legislation, the legislation must be followed.