Priority claims

Publication date:

Amendment date: June 17, 2019

This practice notice provides guidance on priority under section 34 of the Trademarks Act.

In accordance with subsection 34(1) of the Trademarks Act, a request for priority 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 goods or services. Such a priority request may be filed in one of the following ways:

  1. by including the request in an application as originally filed, provided that the subsequent application is filed within the above-noted six-month period;
  2. by amending an application to include the request, provided that the amendment is made within the six-month period;
  3. by filing a separate request in respect of an application at any time within the six-month period.

Should an error be made in a request for priority concerning the date or country of filing of the earlier application, the Office will permit the request 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 request since it is considered that such an amendment would be inconsistent with paragraph 34(1)(a) of the Act. However, pursuant to subsection 33(2) of the Trademarks Regulations, a request for priority may be withdrawn by filing a request to that effect before the application is advertised under subsection 37(1) of the Act.

Subsection 34(1) of the Act does not require that a request for priority 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 request for priority 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 request for priority to include the number, the Office considers that an amendment of the number is permitted by the applicant as of right in accordance with subsection 35(1) of the Trademarks Regulations.)

For the purposes of the request for priority referred to in paragraph 34(1)(b) of the Act, the Office does not consider there to be any requirement to identify the specific goods or services in respect of which priority is requested. With respect to goods or services, it is sufficient if the request 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 goods or services. If, however, an applicant chooses to limit the priority to goods only, to services only, or to specified goods and/or services, the limitations to the goods or services covered by the priority request 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 request for priority outside of the time limits permitted by paragraph 34(1)(a).

With respect the extension of the above-noted six-month period, please refer to the Practice Notice titled "Practice Notice on Extensions of Time due to Force Majeure for Priority and Renewal".

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