OPPOSITION PROCEEDINGS
Cynthia Rowden Bereskin & Parr September 2008
The author wishes to acknowledge the many students at Bereskin & Parr who have contributed to the updating of this paper over the years.
© 2008 Bereskin & Parr
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www.bereskinparr.com TABLE OF CONTENTS OPPOSITION PROCEEDINGS...... 3
I INTRODUCTION: A REVIEW OF THE STEPS IN AN OPPOSITION...... 3
II PREPARING THE STATEMENT OF OPPOSITION ...... 5 1. Selecting the Grounds of Opposition...... 5 a) Non-compliance with Section 30...... 5 i) Section 30(a): Identification of Goods and Services ...... 6 ii) Section 30(b) ...... 10 (a) Selecting the Correct Date of First Use ...... 10 (b) Applicant’s or Licensee’s Use of the Trade-mark...... 14 (c) Use “as a Trade-mark”...... 16 (d) Variations of the Trade-mark ...... 16 iii) Section 30(e): Improper Reliance Upon “Proposed Use” as a Basis of Application...... 19 v) Section 30(h): Accurately Representing the Trade-mark in the Application...... 20 vi) Section 30(i): Satisfaction of Entitlement to Use the Trade-mark...... 22 b) Non-registrability ...... 27 i) Section 12(1)(a): Surname of an Individual...... 27 ii) Section 12(1)(b): Clearly Descriptive or Misdescriptive...... 29 iii) Section 12(1)(c): Generic Trade-marks ...... 31 iv) Section 12(1)(d): Confusion ...... 31 v) Section 12(1)(e): Prohibited by Sections 9 or 10 ...... 32 c) Non-entitlement...... 34 d) Non-distinctiveness...... 35 2) Relevant Dates...... 36 a) Section 30...... 36 b) Entitlement ...... 38 c) Registrability ...... 38 d) Distinctiveness ...... 41 3) Pleading all Relevant Grounds ...... 42 a) Can Opposition Board Only Decide Opposition on the Basis of Pleadings?...... 42 b) Parties Cannot Raise New Grounds of Opposition Except Pursuant to Pleadings ...... 42 4) Grounds Must be Pleaded to Sufficiently Permit an Applicant to Reply ...... 43 a) The Grounds of Opposition must be Pleaded Completely ...... 43 b) Cases on Sufficiency of Pleadings...... 44 5) Amending the Statement of Opposition ...... 48
III DRAFTING THE EVIDENCE...... 50 1) Form and Content of Affidavits ...... 50 2) Time Limits ...... 54 3) Onus of Proof and Evidentiary Burden...... 57 4) Agreements and Other Proceedings ...... 59 5) Hearsay and Other Evidentiary Defects...... 61 6 Proving the State of the Register...... 68 7) Use of Internet Searches of Trade-marks Office Databases...... 70 8) Marketplace Use ...... 72 9) Similar Business Names and Domain Names ...... 74 10) Other Internet Searching ...... 75 11) Proving Meaning ...... 76 12) The Significance of Use / Registration in Other Jurisdictions...... 78 13) Foreign Decisions ...... 80 14) Relevance of Surrounding Circumstances...... 80
IV FILING NEW EVIDENCE ON APPEAL ...... 82 3
OPPOSITION PROCEEDINGS
I Introduction: a Review of the Steps in an Opposition
The procedure and rules for opposition are found in the Trade-marks Act (the “Act”) (s. 38), in the Trade-marks Regulations (Rules 35 to 47), and also in Practice Notices issued periodically by the Trade-marks Office.
An opposition cannot begin until a trade-mark has been advertised for opposition in the Trade-marks Journal, published weekly by the federal government. Once advertised, the opposition must be filed within two months (s. 38(1)/Rule 38), although the opponent may obtain permission for an extension. Care should be taken to ensure that extension of time requests are made in a timely fashion, are properly addressed to the attention of the Opposition Board and that the request is received by the Trade-mark Office. Particular care also needs to be taken with calculation of deadlines, given the recent amendments to the Regulations, which change some opposition terms, but only for oppositions to applications advertised from October 1, 2007. There are accordingly two separate sets of deadlines depending on the advertisement date of the application.
According to Section 38, there are four possible grounds of opposition:
i) non-compliance with Section 30;
ii) non-registrability, referring to all of the factors in Section 12(1), including name or surname, descriptiveness, confusion with a registered trade-mark or marks that are contrary to Section 9 or 10;
iii) non-entitlement, referring to prior use or making known of a confusingly similar trade-mark or trade name, or to a confusing trade-mark in a previously filed trade-mark application; and
iv) non-distinctiveness
The statement of opposition is filed with the Opposition Board of the Trade-marks Office, which reviews the statement to ensure that it raises at least one valid ground of opposition (s. 38(5)). The opposition is then forwarded to the applicant’s agent who has two months (s. 38(6)/Rule 39), which can be extended, (s. 47(1)) to file a counter statement.1 This deadline, along with other initial deadlines in the opposition process have recently been lengthened by amendments to the Trade-marks Regulations. In most cases, the counter statement is simply a denial of the grounds of opposition. The applicant also has
1 Consult the Practice Notice effective October 1, 2007 for applications advertised before October 1, 2007. 4 the opportunity to challenge the grounds of opposition or the sufficiency of the pleadings, by submitting that the statement of opposition is deficient, in which case the Opposition Board will give the opponent the chance to rectify the pleading issues, or will order that all or certain provisions in the Statement of Opposition be struck out. This procedure, which is fairly recent, will be discussed in greater detail below.
Failure of the applicant to file a counter statement will result in the abandonment of the application (s. 38(7.2)). If, however, the counterstatement is filed, the opponent may then file and serve its evidence (s. 38(7)/Rule 41). Under the amended Regulations, it has four months (which can be extended) to file evidence, in the form of affidavits, or statutory declarations. Once filed, the applicant may cross-examine any of the affiants, and may also file its own evidence (under similar time limits) (s. 38(7)/Rule 42).
Cross-examination is available, following a request by the party seeking cross- examination, and pursuant to an order of the Opposition Board (Rule 44(2)). The request normally affects the time limits for the next stage in the opposition. Each party bears its own costs of the cross-examination.
There is also the ability for the opponent to file evidence in reply, (one month term, following the completion of the applicant's evidence, which is also extendible (s. 38(7)/Rule 43)) and then the parties may each prepare and file their written arguments (Rule 46). Written arguments are filed in sealed envelopes with the Trade-marks Office, who will then forward a copy to the other party once both have been filed, or the deadline for filing written submissions has passed. Either party has one month to request an oral hearing once the Registrar has forwarded both parties a notice that they may do so (Rule 46(4)).
Failure to participate at any stage of the proceedings can result in deemed abandonment of the application, for the applicant, or the opposition, for the opponent (s. 38 (7.1) and 38 (7.2) and Rule 41(2) & 42(2)). (Note, however, that retroactive extensions of time can be permitted in certain circumstances—see the discussion in III.2 Time Limits, below.)
Applicants can lose oppositions for a variety of reasons directly related to the way the original application was drafted. Oppositions have succeeded where applicants relied upon proposed use when in fact there was use, improperly selected the date of first use, or did not describe their wares or services in ordinary commercial terms. These and other filing issues are discussed below.
When acting for either an applicant or an opponent, effort must be taken to prepare carefully and thoroughly for the opposition. Vigilance must be exercised throughout the proceedings to evaluate the grounds and the evidence, and to decide whether amendments should be made to the application or the statement of opposition, or whether the evidence already filed should be supplemented. 5
The fact that currently, the relevant date for many issues in the opposition is the date of the decision (see “Relevant Dates”, below) suggests that the parties must be constantly considering whether new facts should be adduced.
The following pages will review some of the areas that frequently lead to problems, or are commonly cited in Opposition Board decisions as affecting the final outcome. There will also be a brief consideration of appeals to the Federal Court.
II Preparing the Statement of Opposition
1. Selecting the Grounds of Opposition
According to Section 38 of the Act, there are four possible grounds of opposition:
i) non-compliance with Section 30;
ii) non-registrability, referring to all of the factors in Section 12(1), including name or surname, descriptiveness, confusion with a registered trade-mark, or marks which are contrary to Section 9 or 10, and, most recently, the Olympic and Paralympic Marks Act;
iii) non-entitlement, referring to prior use or making known of a confusingly similar trade-mark or trade name, or to a confusing trade-mark in a previously filed trade-mark application; and
iv) non-distinctiveness.
Each of these will be discussed in more detail below.
a) Non-compliance with Section 30
This ground focuses attention on the way the application was drafted. Practically, many issues can be fitted into these criteria. The most common for opposition proceedings include non-compliance with:
• Section 30(a) (wares and services must be in ordinary commercial terms);
• Section 30(b) (the application must include the date from which the trade- mark was first used);
• Section 30(d) (improper reliance on a foreign application or registration) 6
• Section 30(e) (if there has been no use, a statement that the applicant intends to use the trade-mark);
• Section 30(h) (the trade-mark must be depicted accurately); and
• Section 30(i) (the applicant must state that it is satisfied of its entitlement to use the trade-mark).
i) Section 30(a): Identification of Goods and Services
Wares or services must be described in ordinary commercial terms (s. 30(a)). An applicant must define its wares or services in terms that are commonly used by traders to describe their wares or services, and with the detail normally used in the trade (s. 30(a)). This issue is frequently encountered during prosecution, and the Trade-marks Office maintains a Manual of Wares and Services that provides useful guidelines on acceptable descriptions. The Manual is occasionally updated to reflect changes in Trade-marks Office practice. In January 2006 a significantly revised Manual was introduced and made available online on the CIPO website. In addition, Practice Notices are issued periodically which set out new requirements for specific wares and services (e.g. see the notice published August 6, 2003 on “Compliance with Paragraph 30 (a) of the Trade-marks Act – Pharmaceuticals, (http://strategis.ic.gc.ca/sc_mrks/cipo/tm/ tm_notice/tmn2003- 08-06-e.html). Both the Manual and any pertinent Practice Notices should be reviewed, both at the time of filing, and when drafting a statement of opposition, since they may provide guidance in assessing Section 30(a) as a ground of opposition.
One would think that if the application has been approved during examination, there would be general agreement that the wares have been sufficiently defined. However, in Burroughs Wellcome Inc. v. Novopharm Ltd. (1994), 58 C.P.R. (3d) 513 at 520 (F.C.T.D., per McKeown J.), the Court held that the Opposition Board has the right to decide whether the wares or services are in ordinary commercial terms, regardless of whether an Examiner has already approved the application, including the statement of wares or services. Where the wares or services are directed to those having specialized knowledge or expertise, it may be necessary to adduce evidence concerning the understanding of the wares or services within a particular industry or trade to meet the opponent’s initial burden and assist the Registrar in determining whether the requirements of Section 30(a) have been met (see Call-Net Telecommunications Ltd. v. Cam-Net Communications Network Inc. (1991), 70 C.P.R. (3d) 283 (T.M.O.B., per Vandenakker) and Oracle Corp. v. Oracle Service Networks Corp. (unreported) [1999] T.M.O.B. No. 8 (January 21, 1999) (T.M.O.B., per Partington)).
7
Several oppositions have succeeded on the ground that the wares or services did not meet the necessary standard. For example, in Scotch Whisky Association v. Mark Anthony Group Inc. (1990), 31 C.P.R. (3d) 55 (T.M.O.B., per Martin), an application for “distilled alcoholic beverages” was opposed on the basis, inter alia, that the wares did not comply with the Section 30(a) requirement, to be in ordinary commercial terms. The applicant’s affiant, on cross-examination, noted that the applicant manufactured scotch whisky, brandy, tequila, Canadian whisky, vodka, gin, liquors and would be selling kirsch, calvados, pear William, grappa and more. The Hearing Officer noted that this response, and others, suggests that the phrase “distilled alcoholic beverages” is a general class of goods, of which these were specific types, as noted in the affiant’s response. The agents for the applicant, in responding to the undertakings given at cross-examination, did not even use the phrase “distilled alcoholic beverages,” which seems to have been a fatal move. The Hearing Officer went on to find that the opponent had met its evidential burden of showing non-compliance with Section 30(a), and the applicant had failed to reply, resulting in this ground of opposition succeeding. The opponent failed in six other grounds of opposition, but the successful Section 30(a) attack resulted in refusal of the application.
A similar, though perhaps not so surprising result can be found in Molson Cos. Ltd. v. Andres Wines Ltd. (1989), 23 C.P.R. (3d) 544 (T.M.O.B., per Partington). In that case, the application originally covered wine but was amended during the opposition to “wine, namely cider”, presumably to stave off other grounds of opposition (for example, perhaps for failure to use since the date of first use claimed). Admittedly, wine and cider do seem like two different products. The opponent wisely amended the statement of opposition to also claim that the wares were not in ordinary commercial terms. In reviewing evidence filed by the parties relating to this ground, the Hearing Officer noted that there was no suggestion that cider was a type of wine. The opposition based on this ground, as well as the non-use ground, succeeded.
Another opposition succeeded on 30(a) grounds when the applicant’s statement of wares read “alcoholic beverages, namely distilled grain, wheat and rye spirit except beer” (Spirits International N.V. v. SC Prodal 94 SRL (unreported) [2005] T.M.O.B. No. 188 (November 9, 2005) (T.M.O.B., per Bradbury). Although the Hearing Officer noted that beer was excluded from a category to which it does not belong, that in itself did not make the statement unacceptable. Rather, the Hearing Officer’s concern stemmed from the fact that “the applicant clearly intends to use its mark in association with vodka and yet chose not to refer to vodka in its statement of wares.” Thus, the statement of wares was neither specific nor ordinary.
A recent Practice Note from CIPO has indicated that the wares "wine" and "beer" are now considered sufficiently specific to satisfy section 30(a) of the Trade- 8 marks Act. It is no longer necessary to specify whether or not the wine or beer contains alcohol.
Other decisions have held that a description of wares including the phrase “other fast foods” is not in ordinary commercial terms (Loeb Inc. v. Sub House Inc. (1996), 68 C.P.R. (3d) 400 (T.M.O.B., per Partington)); “tax services” is too broad, and therefore meaningless (H & R Block, Inc. v. U & R Tax Services Ltd. (1993), 49 C.P.R. (3d) 375 (T.M.O.B., per Martin)); and that “other claims and processing services” of the description “insurance and other claims and processing services” is too ambiguous (Oracle Corp., supra). And although in Stanhome Inc. v. Les Encheres Stanley Inc. (1983), 82 C.P.R. (2d) 20 (T.M.O.B., per Partington) “operating a business specializing in the retail sale of classes of household and commercial wares” was held to not require delimiting the products being sold in specific terms or by general categories, subsequent cases seem to have required more detail. The description “the promotion of wares and services of others” was found too broad in Sunshine Village Corporation v. Sun Peaks Resort Corporation (unreported) [2000] T.M.O.B. No. 31 (March 3, 2000) (T.M.O.B., per Partington), as was “development of computer software for others” (Canada Post Corporation v. Butterfield & Daughters Computers Ltd. (2008) unreported (June 17, 2008) (T.M.O.B. per Martin). “Discount sales outlets for merchandise” was found to be unduly broad in that it fails to limit the merchandise sold through the applicant’s discount sales outlet. The applicant had argued that the trade-mark itself, MORE THAN A DOLLAR STORE, limits its services to those associated with the operations of a dollar store, namely household needs, and that this limitation should help satisfy Section 30(a). The Board held, however, that the language of Section 30(a) does not support the proposition that compliance with the section can be determined by the trade- mark itself (Everything for a Dollar Store (Canada) Inc. v. Dollar Plus Bargain Centre Ltd. (1998), 86 C.P.R. (3d) 269 (T.M.O.B., per Partington)).
An attempt to be too specific in describing the wares may also backfire. In 168932 Canada Ltd. c.o.b.a. Andy Pak v. Alberta Sunflower Seeds (1991), 40 C.P.R. (3d) 151 (T.M.O.B., per Martin), the application covered unroasted sunflower seeds based on use, and roasted sunflower seeds based on use, but as of a later date. An opposition was filed on the basis of confusion with an identical trade-mark, used after the original date of use for unroasted sunflower seeds, but before the date for roasted sunflower seeds. The application was refused with respect to the roasted version. If the applicant had merely relied upon use, since the earliest date, for “sunflower seeds”, without trying to specify the goods in such detail, the application might have succeeded in its entirety.
Another consideration in drafting wares and services descriptions is that it has been held that while there is nothing in the Act that restricts a service to one that is not merely incidental or ancillary to the sale of wares, there is nonetheless a requirement that the service must be one that is offered to some third party or be of benefit to the public (Carling O’Keefe Breweries of Canada Ltd. v. Anheuser- 9
Busch, Inc. (1985), 4 C.P.R. (3d) 216 (T.M.O.B., per Troicuk)). Examples of oppositions based on non-compliance with Section 30(a) because services were found non-beneficial to the public or self-serving include Ralston Purina Co. v. Effem Foods Ltd. (1997), 81 C.P.R. (3d) 528 (T.M.O.B., per Groom) and Ralston Purina Co. v. Effem Foods Ltd. (2000), 5 C.P.R. (4th) 398 (T.M.O.B., per Herzig), where, in both, the applicant’s associated wares were “pet food” and its services “advertising, marketing and promotional services relating to the pet food products of the applicant.”
At an informal meeting several years ago, one of the members of the Opposition Board suggested that every opposition potentially has a Section 30(a) ground. This is disheartening for applicants, and should always be considered by prospective opponents. Obviously, like all things, the requirement for specificity can be taken too far. Some industries may be simply too diverse for an applicant to exhaustively list all possible areas of activity conducted. A trade-mark registration must be useful to a registrant for a long period of time, which means that there should be some flexibility in the description of goods or services, to permit future growth and diversification. Terms that are already widely used on the Register, such as “banking services”, or “grocery store services”, probably should not require further definition, despite the fact that there may be a variety of components that make up these services. Often, terms that might once have been acceptable are held not to conform with the Act, especially after a significant growth in the industry. For example, “computer software”, “telecommunications services” and “pharmaceutical products”, while once permitted, are no longer satisfactory.
The best advice for applicants is to first select statements of wares that both identify broad general classes, (for example, clothing), and the goods with the detail normally used in the trade. One might argue that if members of an industry use a certain word or phrase to identify their industry, like, the “garment” industry, or the “jewelry business”, then the requirements of the Act have been met. However, it is unnecessary, and unduly restrictive, to include detail, such as “knit shirts, woven shirts, t-shirts, short sleeve shirts, dress shirts and casual shirts”, when simply “shirts” will do.
Second, if oppositions raise issues about the statement of wares or services, the applicant should address these issues immediately. The statement of wares or services can be amended at any time before the Registrar’s decision (as long as the amendment does not extend the goods or services.) In Vejee Group (Canada) Ltd. v. Woolworth Canada Inc. (1999), 3 C.P.R. (4th) 12 (F.C.T.D., per Pelletier J.), the Court refused to consider an amendment made subsequent to the Registrar’s decision refusing registration, to limit the places where the wares might be sold, on the ground that an application cannot be amended after refusal. The Court stated that while the Act does not speak directly to post- refusal amendment, common sense suggests that one cannot amend that which has already been adjudicated and that since the application would not be that 10 which was before the Registrar, it therefore cannot be the subject of an appeal. The Court further noted that from a practical perspective, allowing such amendments would lead to a process of successive approximation in which applicants would draft their claim as widely as possible before the Registrar, only to narrow them to conform to the Registrar’s objections at the appeal stage.
ii) Section 30(b)
(a) Selecting the Correct Date of First Use
If the date of use stated in the application is incorrect, the application may be invalid as failing to comply with Section 30(b). (Canadian Olympic Assn. v. Nexa Corp. (1990), 29 C.P.R. (3d) 295 (T.M.O.B., per Martin)). That may take place where the actual date of first use is later than the date claimed, or where there was no use of the trade-mark on the date of an application relying on use in Canada. Once case also looked at use later than the date claimed (see below) but generally that should not prejudice an applicant. The definitions of “use” in Section 4 are important for analyzing this issue. What constitutes use is differently defined for wares (ss. 4(1) and 4(3)) and services (s. 4(2)). Data Broadcasting v. Signal 9 Solutions (unreported) [2002] T.M.O.B. No. 121 (October 28, 2002) (T.M.O.B., per Folz) illustrates this point clearly. In this case, the Opposition Board held that evidence indicating that a trade-mark was “introduced” on a particular date with sales occurring later, invalidated a claim of use for wares but not for services, since the “introducing” of services might satisfy Section 4(2). The Federal Court held differently in ConAgra Foods, Inc. v. Fetherstonhaugh & Co. (2002) 23 C.P.R. (4th) 49 (February 20, 2002) (F.C. T.D. per Mackay J.) where marketing efforts in anticipation of a sale were found to be use as a trade-mark.
Attention should be given to how the wares and services are drafted in terms of dates of first use for each “general class” (see s. 30(b)). In Pronuptia de Paris v. Pronovias (unreported) [2007] T.M.O.B. No. 63 (April 19, 2007) (T.M.O.B., per Carrière) the applicant was unable to show use for several classes of wares and as a result the registration was refused with respect to those wares. The Board Member held that the use of a semicolon in the list of wares indicated separate classes of wares. Use must therefore be shown for each class of goods delineated by a semicolon in the application’s list of wares and services.
Use cannot have been abandoned between the date claimed and the filing date of the application. If there is a long time period of non-use between the alleged use and filing, a challenge of non-use may succeed (see Loblaws Inc. v. No Frills Auto and Truck Rental Ltd. (2006) 49 C.P.R. (4th) 179 (F.C. per O'Keefe J.), R.W.S. Hoists & Cranes, Inc. v. Richards-Wilcox Canada Inc. (2004), 41 C.P.R. (4th) 258 (T.M.O.B., per Martin), Parfumes Christian Dior v. Lander Co. Canada Ltd. (2000), 6 C.P.R. (4th) 257 (T.M.O.B., per Partington) and Labatt Brewing Co. 11 v. Benson & Hedges (Canada) Ltd. (1996), 67 C.P.R. (3d) 258 (F.C.T.D., per Simpson J.)). The applicant does not have to establish use of its trade-mark for every single month of the critical period but a large gap (in this case, 5 years) cannot be ignored (La Confédération des Caisses Populaire et d’Économie Desjardins du Québec v. Accord Business Credit Inc. (unreported) [2005] T.M.O.B. No. 176 (September 21, 2005) (T.M.O.B., per Carrière)).
Some dates are suspect and should be avoided by applicants without specific proof. A statutory holiday or weekend, for example, is unlikely to be a genuine date of first use. For example, in both Nerds On-Site vs. Iverson (2006), 57 C.P.R. (4th) 139 (T.M.O.B. per Tremblay) and XS Energy, LLC v. Petrillo (2007) T.M.O.B. No. 205 (December 18, 2007) (T.M.O.B. per Carrière) the claimed date of January 1, 2000 supported the opponent's section 30(b) ground. Similarly in Guang Dong Kelon Electrical Holdings Co. v. Kelon Canada Ltd. (2007) T.M.O.B. No. 141 (September 10, 2007) (T.M.O.B. per Bradbury) the applicant claimed a date of first use of December 25 which is, of course, a statutory holiday. The applicant did not file any evidence to rebut the opponent’s evidence that most retail stores would have been closed that day.
With respect to instances where the actual date of first use is later than the date claimed, even a discrepancy of several days is sufficient for invalidation. For example, in Mougey v. Janzen (2007) T.M.O.B. No. 204 (May 24, 2007) (T.M.O.B. per Bradbury) May 31, 2001 was claimed as a date of first use on imported goods, however the evidence showed the goods did not clear Canadian customs until June 1, 2001. The s. 30(b) ground of the opposition was successful with respect to the applicable wares. In Avalon Sunsplash Ltd. v. Friendly Stranger Corp. (2007) T.M.O.B. No. 171 (November 8, 2007) (T.M.O.B. per Herzig) the applicant’s actual date of first use was only three days after the claimed date of use, but this justified the refusal of the application on the s. 30(b) ground. Also in St, Joseph Media Inc. v. Nygard International Ltd. (2006), T.M.O.B. No. 174 (October 30, 2006) (T.M.O.B. per Bradbury), the applicant relied upon use since August 1998. The evidence showed use in "Fall" 1998. Since August is not a "fall month", and there was no other evidence to support the August date, the s. 30(b) ground succeeded.
It is generally accepted that if the actual date of first use is earlier than the date claimed in the application, a section 30(b) ground will not succeed. In Marineland v. Marine Wonderland and Animal Park Ltd. (1974), 16 C.P.R. (2d) 97 (F.C.T.D., per Cattanach J.) the Court held that since claiming a date later than the actual date is only to an applicant’s disadvantage, an application will not be invalidated for this reason, if the later date was selected “out of a super abundance of caution...in the interest of greater certainty” (Marineland, supra at 106) (see also Alibi Roadhouse Inc. v. Grandma Lee’s International Holdings Ltd. (1997), 76 C.P.R. (3d) 327 (F.C.T.D., per Teitelbaum J.) and Sanna, Inc. v. Chocosuisse Union des Fabricants Suisses de Chocolat (1986), 14 C.P.R. (3d) 139 (T.M.O.B., per Troicuk). The latter interpreted Marineland, supra, to stand 12 for the proposition that an applicant may claim any date subsequent to the actual date of first use, irrespective of motive. The same view was recently expressed in obiter by the Opposition Board in World Wrestling Federation Entertainment Inc. v. Danny Alex (2008) unreported (June 18, 2008) (T.M.O.B. per Bradbury) and Black Entertainment Television, Inc. v. CTV Ltd. (2008) T.M.O.B. No. 65 (April 25, 2008) (T.M.O.B. per Tremblay). However, in Goodall Rubber Co. v. Goodyear Tire and Rubber Co. (1999), 3 C.P.R. (4th) 393 (T.M.O.B., per Herzig), where the applicant had misstated the date by approximately 30 years, the Section 30(b) non-compliance ground of opposition (failure to name the date of first use) on the basis of an earlier first use date was successful. The Board stated that the large discrepancy in dates and the fact the applicant, who clearly knew of the earlier use and chose not to explain the discrepancy to the Board led it to doubt that the applicant had misstated the date out of an “abundance of caution” and instead to believe that the applicant “purposely misrepresented” the date of first use in the application. The Board concluded that as the trade-marks Register is a public record, the Registrar has a duty to ensure that the Register is as accurate as may be reasonably expected, and that given the foregoing, the misstatement was not excused by what it termed the Marineland “exception”.
For agents and companies engaged in the drafting of applications, the advice is: get the proof of use first. Do not simply rely upon the applicant’s recollection of when use commenced. Carefully explain what constitutes use, for both wares and services, and make sure that the date is verifiable.
If an opponent raises an issue regarding use or non-use, discuss this immediately with the applicant. If the dates do not seem appropriate, consider whether it is possible to amend the application. However, once advertised, the opportunities for amendment are limited. Under the Regulations, it is not possible to amend an application relying on proposed use to one alleging use (Regulations, s. 31(d)), nor is it possible to amend an application after advertisement to change the date of use (Regulations, s. 32(b)) to an earlier or later date. It is also not possible to amend a use-based claim to proposed use after advertisement of the application. See Seven-Up Canada Co. v. Caribbean Ice Cream Co. (2007) T.M.O.B. No. 49 (March 9, 2007) (T.M.O.B. per Bradbury). It should be possible to delete a proposed use claim, and rely only upon use and registration abroad.
The Opposition Board has also held that, while an applicant is not barred from obtaining a registration simply because it filed an incorrect application at one time, when the applicant fails to explain the discrepancy between two divergent dates the applicant may fail to meet the legal onus set out in 30(b). (Data Management Strategies v. SNS/Assure (2000), 9 C.P.R. (4th) 388 (T.M.O.B., per Herzig))
An interesting line of cases demonstrates why it is important to consider multiple grounds of application, since if one fails during an opposition, the application 13 won’t necessarily be refused if a second ground of application can succeed. For example, an application that relies upon use which in fact can not be substantiated during an opposition may not necessarily fail, if the applicant’s use and registration abroad basis can succeed. In McCabe v. Yamamoto & Co. (America) Inc. et al. (1989), 23 C.P.R. (3d) 498 (F.C.T.D., per Joyal J.), the judge allowed the application to proceed based on use and registration in the United States, although he found that the applicant had failed to demonstrate use in Canada based on the unlawful use by a distributor. The facts of this case are quite complex. The applicant relied upon use that was in fact, licensees’ use. That use, in turn, was found by the court to be “unlawful”, since the licenses had been terminated by the time sales in Canada started. The case is interesting in that there clearly was use, but neither the applicant nor the opponents (the former licensees) seemed to be able to take advantage of it. However, Joyal J. noted that there was a second ground of application, namely use and registration in the United States, and it was fully valid, and thus permitted the application to succeed. Subsequent Opposition Board decisions have followed the ruling in McCabe, see: Lowenbrau Aktiengesellschaft v. Comm. Telesforo Fini Societa Per Azioni (1991), 36 C.P.R. (3d) 54 (T.M.O.B., per Savard), Aetna Life Insurance Co. of Canada v. S.N.J. Associates, Inc. (2001), 13 C.P.R. (4th) 539 (T.M.O.B., per Folz) and Enterprise Car & Truck Rentals Ltd. v. Enterprise Rent- a-Car Co. (1998), 87 C.P.R. (3d) 544 (T.M.O.B., per Martin). In both Lowenbrau, supra, and Enterprise 1998, supra, an attempt to amend an application to delete or limit the use claim was held to be an improper amendment “to change the date of first use”, but since the application relied on both use and use and registration abroad, the applicant could proceed solely on the latter ground.
However, any inconsistency between wares and services in the Canadian application and the United States registration may cause the inconsistent wares or services to be severed from the Canadian registration. One category of services incorrectly based on use (rather than on making known) in Canada was disallowed in Enterprise Car & Truck Rentals Ltd. v. Enterprise Rent-A-Car Co. (2000), 7 C.P.R. (4th) 368 (T.M.O.B., per Folz). The remaining services based on use and registration in the United States were allowed, even though they were slightly different than the services as specified in the Canadian application. It was implied that if the services in the United States registration did not cover the services listed in the original Canadian application, then the application would fail.
There may be some threshold where a faulty use claim is considered to completely nullify an application. In Lowenbrau Aktiengesellschaft supra, the opponent claimed that the applicant’s false use dates made the application fraudulent, and thus not “an application”. The opponent did not meet the evidentiary onus of showing bad faith, or intent to deceive and thus this ground failed, but the argument might succeed in certain cases.
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If there is a real issue and an amendment is either not permitted or raises the problem of possible invalidity, wise counsel consider re-filing, with the correct date of first use. It is better to fight an opposition on important grounds, such as the likelihood of confusion, than to lose on technical grounds.
(b) Applicant’s, Predecessor’s or Licensee’s Use of the Trade-mark
If an applicant relies upon use, it should confirm whether it is its use, or use by a licensee or predecessor. In R.W.S. Hoists & Cranes, supra, a Section 30(b) ground succeeded where the evidence showed the use was by a predecessor, and not the applicant. Predecessors should be named. (See Gemstar Development Corporation v. Dieter Dierks (2004), 42 C.P.R. (4th) 466 (T.M.O.B., per Bradbury) and Bio Agri Mix Ltd. v. Canadian Bio-Systems Inc. (2001), 20 C.P.R. (4th) 372 (T.M.O.B., per Bradbury). See also Molson Breweries, A Partnership v. John Labatt Ltd. (1994), 56 C.P.R. (3d) 107 (T.M.O.B., per Martin) where an amalgamating corporation was held not to be a predecessor in title because an amalgamation does not constitute a transfer or assignment of trade- mark rights. This reasoning has been followed in CPSA Sales Institute v. Groupe Conseil Parisella, Vincelli Associés Inc. (unreported) [2005] T.M.O.B. No. 105 (June 13, 2005) (T.M.O.B., per Carrière).
It pays to remember that s. 30(b) requires a date of first use by the applicant or its named predecessor. In Asset Inc. v. Park It & Sell It of Canada Ltd. (2007) T.M.O.B. (April 18, 2007) (T.M.O.B. per Bradbury), the applicant relied upon use, but the evidence showed that at the filing date, the applicant company did not exist. See also Libra National Inc. v. Jiva Manufacturing & Distributing Inc. (2007) T.M.O.B. No. 102 (July 5, 2007) (T.M.O.B. per Bradbury). If the applicant is a company it cannot rely upon its use before incorporation. If there was earlier use, the applicant should rely upon use by the individual as a predecessor in title. See Viacom International Inc. v. Crossroads Publications Inc. (2008) T.M.O.B. No. 54 (February 6, 2008) (T.M.O.B. per Bradbury).
It can also be fatal to incorrectly identify the applicant claiming use. In Archmetal Industries Corp. v. Jag Flocomponents NA Inc. (unreported) [2007] T.M.O.B. No. 70 (May 3, 2007) (T.M.O.B. per Bradbury) use was claimed by the applicant on the associated wares since 2002. The opponent succeeded on, inter alia, s. 30(b) grounds by producing NUANS evidence that no such legal entity as Jag Flocomponents NA Inc. existed. The search produced registered business names very similar to the applicant’s, yet no rebuttal evidence was submitted to correct the record. Similarly in Sunseeker International (Boats) Ltd. v. Three Buoys Houseboat Vacations Ltd. (2008) unreported (June 9, 2008) (T.M.O.B. per Robitaille), naming predecessors and not connecting them to other entities who may have used the trade-mark supported the opponent’s s. 30(b) ground.
Under Section 50 of the Act, use by a licensee, for the purposes of the Act, is the same as use by the trade-mark owner (prior to June 9, 1993 when Section 50 15 was amended, the owner could claim the benefit of licensed use of a mark for registered users of the mark only). If the trade-mark owner authorizes a licensee to sub-license the mark, the use by the sub-licensee will inure to the benefit of the owner as well (s. 50(1)). In considering dates of first use, the parties should determine whether use has taken place by a licensee, or a sub-licensee, if there are any (United Distillers Glenmore Inc. v. El Toro Restaurant & Pizzeria Ltd. (1996), 70 C.P.R. (3d) 346 (T.M.O.B., per Savard)). If the use was by a licensee, and not the applicant, the applicant should say so (the online filing form contemplates use and proposed use by an applicant and/or a licensee). Failure to reference the licensee can invalidate the application under s. 30(b) or 30(e). See Alltemp Products Co. Ltd. v. Bit Holder Inc. (2007) T.M.O.B. No. 128 (August 30, 2007) (T.M.O.B. per Bradbury) where on cross examination, it was revealed that it was always intended that the licensee, and not the applicant, would use the trade-mark. Use by a licensee was not mentioned in the application. A similar result occurred in Molson Canada 2005 v. Cardoso (2007) T.M.O.B. No. 139 (September 19, 2007) (T.M.O.B. per Martin).
The Act does not specify that a license must be in writing. Section 50 includes a provision that “to the extent that public notice is given of the fact that the use of a trade-mark is licensed by the owner, it shall be presumed, unless the contrary is proven, that the use is licensed by the owner and the character or quality of the wares or services is under the control of the owner” (s. 50(2)). In Wells’ Dairy Inc. v. U.L. Canada Inc. (2000), 7 C.P.R. (4th) 77 (F.C.T.D., per Heneghan J.) despite the fact that there was no evidence of a written licensing agreement, the mark was still considered valid because there was an oral licensing agreement and because there was sufficient public notice of the license on the wares. This confirms that it is good practice for trade-mark owners to require their licensees to include notices on the wares, or in the advertising of services in association with which the trade-mark is used, that the mark is licensed by or under the authority of the trade-mark owner. Further, such notices can help establish the necessary relationship between the trade-mark owner and a licensee when the license has not been reduced to writing. In some instances, an applicant may wish to preserve the confidentiality of a license agreement, in which case the applicant can establish in court the existence of a licensing agreement by an affidavit accompanied by a sample of a label giving public notice of the fact of licensed use (Saputo Groupe Boulangerie v. National Importers Inc. (2005), 44 C.P.R. (4th) 241 (F.C.T.D., per Noël J).
Corporate structure alone is insufficient to establish the existence of a license within the meaning of s. 50. There must also be evidence that the applicant controls the use of the mark by the related company and takes steps to ensure the character and quality of the services provided (London Drugs v. Purepharm (2006), 54 C.P.R. (4th) 87 (T.M.O.B. per Tremblay) and Axa Assurance Inc. v. Charles Schwab & Co. (unreported) [2005] T.M.O.B. No. 42 (March 10, 2005) (T.M.O.B., per Tremblay)). See also Hughes v. Blanchard Training & Development Inc. (unreported) [2004] T.M.O.B. No. 66 (March 29, 2004) 16
(T.M.O.B., per Carrière), where the opponent’s evidence of use was disregarded since such use did not satisfy the requirements of Section 50 (controlled license). There was a husband-wife relationship between the trade-mark owner and the major shareholder of the company that used the opponent’s trade-mark.
Oral licenses have also been recognized in House of Kwong Sang Hong International Ltd. v. Borden Ladner Gervais (2004), 31 C.P.R. (4th) 252 (F.C., per Noël J.) and in Cushman & Wakefield Realty (2004), 35 C.P.R. (4th) 460 (F.C., per Harrington J.) aff’d (2004), 37 C.P.R. (4th) 212 (F.C.A., per Pelletier J.A.) where authority to use the trade-mark was not in writing but still acceptable under s.50(1), as there were other agreements, not specifically referring to trade-marks, and close monitoring of business activities.
(c) Use “as a Trade-mark”
An opposition may succeed on section 30(b) grounds where the mark applied for has not been used “as a trade-mark” but instead has functioned as a trade name or served a descriptive function. The former was the case in Canadian Medical Association v. Physician’s Choice of Arizona, Inc. (2005) 46 C.P.R. (4th) 214 (T.M.O.B., per Herzig). The applicant used the trade name PHYSICIAN’S CHOICE and sought to register it as a trade-mark. The applied for mark appeared on the product packaging but only inconspicuously in diminutive lettering, either at the front or bottom. Wherever on the product packaging the term PHYSICIAN'S CHOICE appeared, it was accompanied by the trade-mark symbol TM in superscript and followed by a mailing address. The font size of the term PHYSICIAN'S CHOICE was sometimes, but not always, larger than the mailing address. The opponent argued, and the Hearing Officer agreed, that the display of the symbol TM adjacent to the term PHYSICIAN'S CHOICE couldn’t, by itself, operate to transform trade name use into trademark use. The Hearing Officer said: “In my view the term PHYSICIAN'S CHOICE cannot be said to identify or distinguish the product. Rather, the term operates to alert the consumer of the manufacturer's mailing address.” An example of a descriptive use, as opposed to trade-mark use is shown in Kellogg Canada Inc. v. Weetabix of Canada Ltd. (2007) T.M.O.B. No. 147 & 148 (October 1, 2007) (T.M.O.B. per Martin) involving the marks HOOPS and OAT HOOPS. The applicant’s evidence showed that the marks were used to describe a particular category of bulk product. A s. 30(b) opposition ground succeeded since such use was not trade- mark use.
(d) Variations of the Trade-mark
Minor variations between the trade-mark as used on the claimed date of first use and the trade- mark for which registration is sought might be the basis for a successful section 30(b) opposition. In Coastal Culture Inc. v. Wood Wheeler Inc. [2007] F.C. 472 (May 2, 2007) (F.C., per O'Keefe), the Applicant's alleged use of the DIRT SHIRT mark was based on prior use of the marks P.E.I. DIRT SHIRT and THE ORIGINAL P.E.I. DIRT SHIRT. The Applicant submitted that despite the words "P.E.I." and "THE ORIGINAL", the words "DIRT SHIRT" were the dominant feature on its wares, and this minor deviation did not constitute non-use of the mark. In refusing this argument 17 and the application to register the trade-mark, the Federal Court held that the Applicant never used the DIRT SHIRT mark in isolation; its wares were always labeled P.E.I. DIRT SHIRT or THE ORIGINAL P.E.I. DIRT SHIRT and therefore, "P.E.I" had always been an element of the alleged mark. Citing Burroughs Wellcom Inc. v. Kirby, Shapiro, Eades & Cohen (1983), 73 C.P.R. (2d) 13 (F.C.T.D.) the Court noted that unlike in the U.K, there is no provision in the Trade-marks Act that provides that "the use of the whole of a registered trade-mark shall be deemed also to be the use of a registered trade-mark which forms part of the whole if the registered owner is the same." A similar finding was made regarding the trade- mark CANADIAN ADVENTURE BEER KIT. On the wares the words CANADIAN ADVENTURE were separated from BEER KIT, which also seemed to be a descriptive use. See Molson Canada 2005 v. Cardoso, supra.
(iii) Section 30(d): Improper Reliance On a Foreign Application or Registration
Section 30 (d) provides that where an applicant relies on a foreign application or registration as the basis for registration, the applicant must provide particulars of the foreign application or registration, and if the mark has not been used or made known in Canada, the name of a country in which the trade-mark has been used by the applicant or his named predecessor-in-title in association with each of the general classes of wares of services described in the application.
Where the applicant has not used the trade-mark in another country with each of the general classes of wares and services, an opponent will be able to argue the applicant has not compiled with s. 30(d). In Genesco Inc v. Jarmon (unreported) [2001] T.M.O.B. No. 195 (October 9, 2001) (T.M.O.B., per Partington), the opponent alleged non-compliance with s. 30(d), stating that the applicant had not in fact used the trade-mark in France in association with all the wares alleged to have been used in France. However, the opponent did not adduce any “evidence or argument” and thus failed to meet its initial evidentiary burden. In 105272 Canada Inc. v. Grands Moulins de Paris (unreported) [1990] T.M.O.B. No. 525 (April 30, 1990) (T.M.O.B. per Partington), the opponent made the same allegation and included an affidavit attesting to the results of enquiries by an investigation company into whether the mark in question had in fact been used in France with restaurant services as claimed. However, because the investigation was conducted over two years subsequent to the material date (the filing date of the application) and did not relate to “matters existing, or which could reasonably be inferred as existing, prior to applicant’s filing date”, the evidence was given no weight and the opponent was held to have failed to meet its evidentiary burden. In its decision, the Board, citing earlier cases dealing with section 30 (b), recognized that “it is difficult for an opponent to prove an allegation of non-use by an applicant” and thus the “amount of evidence required to discharge this evidential burden may be very slight”. This is especially the case with respect to allegations under section 30(d), where the non-use is alleged to take place in a foreign jurisdiction.
Given the difficulty faced by an opponent trying to show that the applicant has not used its mark on certain wares in a foreign country as of a particular date in the past, the Board has, on several occasions, allowed the opponent to meet its 18 initial evidentiary burden by introducing evidence that the applicant’s mark is not used on the applicant’s website. In Allergan Inc. v. Lancôme Parums & Beauté & Cie (2007), 64 C.P.R. (4th) 147 (T.M.O.B., per Robitaille), the opponent filed an affidavit based on searches of the applicant’s
Where the applicant seeks registration on the basis of the use and registration of its trade-mark in another country, the mark applied for in Canada must be identical to the foreign-registered one. A section 30(d) ground of opposition was successful in Nora Beverages Inc. v. Nana Immobiliaria de Nogales, S.A. de C.V. (unreported) [1998] T.M.O.B. No. 163 (September 30, 1998) (T.M.O.B., per Partington) where the applicant sought registration in Canada of a design mark from which certain elements present in the Mexican registration has been deleted. The applicant failed to explain why the mark had been changed or to show that the change would not have had an impact on the mark being registered in Mexico, and thus the opponent was successful under section 30(d).
A ground of opposition based on section 30(d) may also succeed where the opponent alleges that the use of the trade-mark in the foreign country was by neither the applicant not its predecessor in title. An early Board decision held that “the use of the mark in a country of the Union must be by the applicant himself or his predecessor in title and not by person authorized to employ the mark by virtue of the laws of the countries of the Union” (David Crystal Inc. and Izod v. La Chemiste Lacoste (1973), 22 C.P.R. (2d) 78 (T.M.O.B., per Robitaille). That decision was followed in Molson Cos. Ltd. V. Rola Weinbrennerei Und Likorfabrick GmbH (1988), 23 C.P.R. (3d) 197 (T.M.O.B., per Partington), which held that use in Germany by licensees and distributors of the applicants did not meet the requirements of section 30(d), notwithstanding the fact that under German law such use would accrue to the applicant.
Finally, in at least one decision, the Board has indicated that an applicant’s non- compliance with the requirements of section 31(1) may be considered by the Board in determining whether the applicant has complied with section 30(d). Section 31(1) requires an applicant replying on registration and use abroad to provide a certified copy of the foreign registration and a translation thereof into English and French. In Molson Cos. v. Schlossbrauerei kaltenberg Irmingard Prinzessin Von Bayern KG (1991), 40 C.P.R. (3d) 543 (T.M.O.B., per Partington), the opponent argued that section 31(1) and consequently section 30(d) had not 19 been complied with due to certain irregularities in the certified copies and translations (including a certified copy dated with a date subsequent to the date of the English translation). However, the opponent did not make this argument until the oral hearing, and the Board held that, while it may be properly consider whether the applicant has met the requirements of section 31(1) when considering a section 30(d) ground of opposition, it could not do so in this case because the opponent had failed to specifically plead the applicant’s non- compliance with section 31(1). iv) Section 30(e): Improper Reliance Upon “Proposed Use” as a Basis of Application
Applicants should be sure whether there has actually been use of a trade-mark in Canada before they file, since there have been several cases that have held that reliance upon “proposed use” as a basis of application, when in fact there has been use of the mark in Canada prior to filing, will invalidate the application under Section 30(b). That section requires that the date from which the trade-mark has been used be included “in the case of a trade-mark that has been used in Canada”. That would be a different ground of attack than relying upon Section 30(e), that requires, in the case of a proposed trade-mark, a statement that the applicant or a licensee intends to use the trade-mark. See Tone-Craft Paints Ltd. v. Du-Chem Paints Co. Ltd. (1969), 62 C.P.R. 283 (T.M.O.B., per Robitaille), followed with Société Nationale Elf Acquitaine v. Spex Design Inc. (1988), 22 C.P.R. (3d) 189, (T.M.O.B., per Troicuk), Frisco-Findus S.A. v. Diners Delite Foods Ltd. (1989), 26 C.P.R. (3d) 556 (T.M.O.B., per Martin), and Les Systems de Formation et al. v. Patrick and Michael Scissons (unreported) [2004] T.M.O.B. No. 63 (March 22, 2004) (T.M.O.B., per Carrière).
In each of the Société Nationale Elf, Frisco-Findus and Les Systems de Formation decisions, the Hearing Officer expressed concern at the “harshness” of a finding that use, prior to a proposed use claim, can result in the refusal of an application, but each case reluctantly followed the original Tone-Craft Paints reasoning that where an application should have been filed on the basis of use, and not proposed use, the application will not comply with Section 30, and must be refused.
This ground of opposition was also considered in R. Griggs Group Ltd. v. 359603 Canada Inc. (2005) 47 C.P.R. (4th) 215 (T.M.O.B., per Tremblay). The opponents did not file any evidence supporting their allegation that the applicant, at the time of filing an application based on proposed use, was already using the mark. The Hearing Officer, noting that “it is difficult to prove a negative,” held that the applicant’s own evidence could be used to support the allegation. The ruling was far from “harsh”, given that the applicant was attempting to benefit from an association between the wares and the mark from a date prior to its proposed use application for the purposes of consideration of the issue of confusion.
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If the applicant itself will not use the trade-mark, but instead intends to license the mark, the application should clearly say so. Failure to make that statement, accompanied by evidence that the use was by a licensee only, will sustain a s. 30(e) ground of opposition (see Applica Consumer Products, Inc. v. InfraReady Products (1988) Ltd. (2007) T.M.O.B. No. 172 (November 13, 2007) (T.M.O.B. per Herzig). See also Crossworld Software, Inc. v. Crossworlds Software, Inc. (2006),52 C.P.R. (4th) 461 (T.M.O.B. per Bradbury) where a proposed use application was refused based on the applicant's own evidence that it had entered into a license agreement prior to the application.
Although ultimately unsuccessful, of note is an opposition based on non- compliance with Section 30(e) (no intention to use the mark), where the opponent alleged that the application for the mark, which the opponent had already been using outside Canada, was essentially a bargaining ploy on the part of the applicant. In support, the opponent cited the following facts: the applicant had previously sought either to distribute the opponent’s products by importing them into Canada, or to manufacture and sell the wares by way of license from the opponent. (The applicant had acted as a distributor or licensee of other beverage trade-marks). In the course of negotiations, the applicant agreed to assign the trade-mark to the opponent. The Board held that it was not satisfied that at the date of application, the applicant’s intention was to license or distribute, and that, in fact, the filing of the application itself was inconsistent with a distribution or licensing intent (National Brands Ltd v. Tropika Canada Inc. (1988), 87 C.P.R. (3d) 150 (T.M.O.B., per Partington)). A Section 30(e) challenge was successful in Intel Corp. v. Emeny (unreported) [2005] T.M.O.B. No. 203 (October 28, 2005) (T.M.O.B., per Bradbury), where the applicant sought to register “IDEAS INSIDE” in association with a long list of wares and services. The applicant’s admission that the primary intent of the long list of wares and services was to prevent others from using the trade-mark in association with the wares was sufficient for the Hearing Officer to find that the applicant did not meet the requirements of Section 30(e). (See also Canadian Tire Corp. v. Gorsky (unreported) [2005] T.M.O.B. No. 207 (October 19, 2005) (T.M.O.B. No. 207)).
Also of note concerning Section 30(e): naming two individuals as the “applicant” for a trade-mark registration is contrary to the Act, and is therefore a valid ground for opposition (Hasbro Canada v. Thomas Nelson and John Thomas Hadaway (1999), 2 C.P.R. (4th) 260 (T.M.O.B., per Partington)).
v) Section 30(h): Accurately Representing the Trade-mark in the Application
An applicant must also ensure that the depiction or description of a design trade- mark is as precise as possible. The Opposition Board and the Courts can be very strict in applying Section 30(h) of the Trade-marks Act, which states that any word or words depicted in a “special form” must be accurately represented. In N.V. Sumatra Tobacco Trading Company v. Imperial Tobacco Limited (2001), 11 21
C.P.R. (4th) 501 (F.C.T.D. per O’Keefe J.) the Court held that the Opposition Board had the right to refuse the registration of the trade-mark HERO & Design in association with cigarettes and cigarette lighters because the applicant had simply photocopied an unfolded blank cigarette package instead of drawing a three dimensional cigarette package which was a more accurate description of the wares. As O’Keefe J. stated:
[T]he trade-mark used by Sumatra [the applicant] in Indonesia and intended to be used in Canada consists of wording and other matter applied to a three dimensional six-sided cigarette package. The trade-mark applied for consists of wording and other matter contained within a two-dimensional, 20 sided figure... It is important that the drawing accurately depict the trade-mark, as there is an important public interest in knowing what trade-mark the applicant intends to protect with the application.
Although other registered marks had previously used photocopies of unfolded cigarette packages in their depiction, the Court still found that the application could not succeed because each case must be decided on its own merits and neither the Court nor the Opposition Board is bound by the state of the Register.
In another case involving an inaccurate depiction, the Federal Court Trial Division in Novopharm v. Bayer (1999), 3 C.P.R. (4th) 305 (F.C.T.D., per Evans J.); rev’g (1996), 76 C.P.R. (3rd) 560 (T.M.O.B., per Herzig), refused a trade-mark application because the word description stated that the proposed mark was the colour “dusty rose”, while the drawing in the application depicted the trade-mark in the colour “blue”. Although this discrepancy had not caused any confusion on the part of the opponent, the Court still refused the application since “the regulations for advertising require strict compliance and mistakes cannot be waived by some test of probability of confusion” aff’d (2000), 9 C.P.R. (4th) 304 (F.C.A., per Strayer J.A.). Applicants, therefore, must be especially accurate in the depiction of their marks since the Court and the Opposition Board can be stringent in the s. 30(h) requirement of “accurate representation”.
Defects in drawings were also examined in Novopharm Ltd. v. Pfizer Canada Inc. (2001), 18 C.P.R. (4th) 395 (T.M.O.B., per Bradbury). In this case, the opponent submitted that the application failed to comply with s. 30 since the advertised drawing did not contain an accurate representation of the mark. The drawing did not show lettering that appeared on the tablets. The Board did not accept this submission since the markings on the tablets were not highly visible and concluded that it was not a significant variation to the mark. The Board did accept, however, the submission that the combination of dotted and solid lines accompanied by a statement that the tablet shown only in the dotted outline does not form part of the trade-mark, did not provide a sufficiently accurate representation of the mark. This ground of opposition was successful.
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Of course, care must be taken that the drawings are not only accurate representations of the mark applied for but also accurate representations of the mark as used. Failure to do can lead to a finding that s. 30(b) has not been complied with (even where s. 30(h) has been). For example, in Sealy Canada Ltd. v. Simmons I.P. Inc., supra, the applicant applied to register a design of a woman reclining on a mattress and submitted a line drawing of the design with its application. The s. 30(b) ground of opposition was successful because the design as used was not a drawing but a photograph and the variations between a photograph of a “specific, live woman and a fanciful drawing of a generic woman” are substantial enough to find that the applied-for mark was not used on the claimed date of first use.
vi) Section 30(i): Satisfaction of Entitlement to Use the Trade-mark
Section 30(i) may be referred to where an opponent states the applicant could not have been satisfied of its entitlement to use a trade-mark, therefore improperly stating so in its application, for a variety of reasons. However, there is a “bad faith” element to the applicant’s conduct making the section useful only in exceptional circumstances (Sapodilla Co. Ltd. v. Bristol-Myers Co. (1974) 15 C.P.R. (2d) 152 (T.M.O.B. per Thurm). Because any allegation of bad faith is met very seriously, the opponent must be very careful in setting out first in the pleadings, and then in properly admissible evidence, the facts to support the claim. Mere awareness, for example, by the applicant of the opponent’s mark is not sufficient. The opponent must state and show that the applicant knew it was not entitled to register the mark.
A s. 30(i) ground succeeded in Lifestyles Improvement Centers, LLP v. Chorney (2007) 63 C,P.R. (4th) 261 (July 12, 2007) (T.M.O.B. per Bradbury) where the applicant had a “relationship” with the opponent’s predecessor which could be viewed as a license. Under the terms of that agreement, the applicant was not entitled to claim rights in the trade-mark personally. When the predecessor went bankrupt, the Hearing Officer found that she could not have been satisfied of her entitlement to use the trade-mark (or more specifically, claim rights to ownership of the trade-mark). In a useful summary, the Hearing Officer stated, “it is clear from the case law that licensees, distributors and the like should not be allowed to usurp their principle’s trade-marks.”
In other cases, opponents have alleged non-compliance with other federal statutes or regulations, such as the Food and Drugs Act R.S.C. 1985, c. F-27, or consumer packaging legislation. There are inconsistent decisions on these matters. For example, in Canadian Bankers Association v. Northwest Bancorporation (1979), 50 C.P.R. (2d) 113 (T.M.O.B., per Metcalfe), the Hearing Officer indicated that an allegation of non-compliance with the Bank Act R.S.C. 1970 (now R.S.C. 1985, c. B-1, as amended) should be pursued in another forum, and not in an opposition. In Crush International Ltd. v. Canada Dry Ltd. 23
(1979), 59 C.P.R. (2d) 82 (T.M.O.B., per Partington), dealing with the C PLUS design trade-mark for soft drinks, the opponent relied on non-compliance with regulations under the Food and Drugs Act supra, which actually had not yet come into force when the opposition was filed, but were published after the filing of the written argument. The Hearing Officer stated that his discretion was limited to the grounds in Section 37 (now 38) of the Act, which did not include compliance with other laws. Interestingly, the Hearing Officer noted that if the trade-mark had been deceptively misdescriptive under those regulations, that would be relevant to the issue of non-registrability based on descriptiveness also argued in the opposition.
Since then, however, the trend seems to have been reversed, as non-compliance with federal statutes has lead to successful Section 30(i) based oppositions. In Co-operative Union of Canada v. Tele-Direct (Publications) Inc. (1991), 38 C.P.R. (3d) 263 (T.M.O.B., per Martin), a Section 30(i) ground succeeded on the basis that use of the mark CO-OP likely contravened the Canada Co-operative Associations Act, R.S.C. 1985, c. C-40. In Institut National des Appellations d’Origine v. Brick (1995), 66 C.P.R. (3d) 351 (T.M.O.B., per Martin), it was successfully argued that use of the trade-mark THE COGNAC OF FINE BEER, for beer, contravened the Food and Drugs Act supra. In House of Edgeworth Inc. v. Barrons (1992), 42 C.P.R. (3d) 463 (T.M.O.B., per Martin), an applicant filed for both tobacco products and non-tobacco products. However, the sale of both, by the same entity, contravened the provisions of the Tobacco Products Control Act R.S.C. 1985, c.14, then in force. The application was refused in respect of wares. In Canadian Red Cross Society v. Kit Care Corp. (1998), 86 C.P.R. (3d) 536 (T.M.O.B., per Partington), potential contravention of the Canadian Red Cross Society Act, S.C. 1909, c.68 provisions concerning use of the sign of the Red Cross in Canada was found to be a sufficient prima facie case with respect to the Section 30(i) ground, and, as the applicant did not participate in the opposition beyond filing a counterstatement, the ground was successful.
Section 30(i) oppositions such as these received some Federal Court approval in Canada Post Corp. v. Registrar of Trade-marks (1991), 40 C.P.R. (3d) 221 (F.C.T.D., per Muldoon J.) where the issue of compliance with the provisions of the Canada Post Corporation Act, R.S.C. 1985, c. C-10 was considered in an interlocutory motion dealing with amendments to the statement of opposition. In that case, the opponent was permitted to amend its statement of opposition to refer to non-compliance with that Act, pursuant to a ground of opposition based on Section 30(i).
An opponent alleging 30(i) non-compliance must be careful to adduce sufficient evidence to meet the initial evidential burden. Three subsequent cases involving Canada Post Corporation (see (1997), 75 C.P.R. (3d) 39; (1997), 75 C.P.R. (3d) 392; and (1997), 78 C.P.R. (3d) 82) all dealt with oppositions where non- compliance with the Canada Post Corporation Act supra was alleged, and in all 24 three the opponent failed to meet the initial evidential burden. And in Canadian Jersey Cattle Club v. George Weston Ltd. (1991), 38 C.P.R. (3d) 113 (T.M.O.B., per Partington), which dealt with the registrability of the trade-mark NEILSON JERSEY MILK for milk, the opponent alleged that failure to comply with the Consumer Packaging and Labelling Act, S.C. 1970-71-72, c.41 [now R.S.C. 1985, c.C-38] meant that the application did not comply with Section 30(i) of the Act. The Hearing Officer doubted whether the opponent’s onus to adduce facts to support these allegations had been met. In any event, the applicant rebutted this allegation with a letter from the Consumer and Corporate Affairs Department, accepting the proposed brand name, resulting in the failure of that ground of opposition. Further, in Dairy Farmers of Canada v. Hunt Wesson (2000), 8 C.P.R. (4th) 20 (F.C.T.D., per Nadon J.) aff’d (2001) 281 N.R. 367 (F.C.A., per Noël J.A.), the Dairy Farmers of Canada referred to guidelines set by Industry Canada which prohibited the use of the term “butter”, (the trade-mark in question was GOUT DE BEURRE COMME AU CINEMA) subject to certain exceptions in their attempt to oppose a mark for registration. However, this submission failed to persuade the Court since the guidelines were not mandatory, but simply “recommendations and suggestions”.
In Cadbury Confectionery Canada Inc. v. Valliant-Sanders (2002), 22 C.P.R. (4th) 388 (T.M.O.B., per Martin), the opponent introduced evidence from Health Canada on the regulation of hemp and the prohibition of using hemp seeds in food products, in an opposition over the CANNABIS CRUNCH trade-mark for chocolate bars “comprised of cannabis seeds”. Despite the evidence, the Hearing Officer held that since certain types of cannabis seeds are legal, it is reasonable to assume that the applicant will comply with the law. How an Opponent could meet this onus when the application is based on proposed use, is not clear.
A similar comment on the "presumed honesty" of an applicant is found in Canadian Tire v. CTC Bank of Canada [2005] T.M.O.B. No. 221 (T.M.O.B. per Bradbury), where the Hearing Officer in considering whether the applicant could be satisfied of its entitlement to use the trade-mark in association with insurance services, suggested that the applicant's intentions were honourable and that it would only use the trade-mark in association with services it was entitled to perform.
However, in Interprovincial Lottery Corporation et al v. Western Gaming Systems Inc. (2002), 25 C.P.R. (4th) 572 (T.M.O.B., per Martin), the Board held that since the operation of a lottery requires a license, absent which the services would be contrary to the Criminal Code R.S.C. 1986, c. C-46, failure of the applicant to show that it had applied for a license or taken other steps to ensure compliance with the Criminal Code was sufficient to find non-compliance with Section 30(i). Despite the fact that the application was based on proposed use, the Board held that the Opponents made out a prima facie case of potential contravention of the Code, satisfying their onus, and the applicant did nothing to meet it, and 25 specifically “it was incumbent on it to show that it had at least taken some preliminary steps to comply with the Code.”. (see also Interprovincial Lottery et al. v. Monetary Capital (2006), 51 C.P.R. (4th) 447 (T.M.O.B. per Bradbury), where the Board refused a proposed use application for SHOWCASE LOTTO in association with certain electronic lottery games. The opponents’ evidence had set out a prima facie case that the applicant was not a party authorized by the Criminal Code to perform gaming or lottery services. The applicant did not file any evidence and as such, did not satisfy its legal burden.) This appears to be a different interpretation of the “presumption of innocence” suggested in the Cadbury case, supra.
Unlike illegality concerning federal statues, it is uncertain whether illegality in provincial statutes is a bar to registration. Two cases tend to support the position that illegality in provincial statutes will not prevent registration and one subsequent case implies otherwise. In Lubrication Engineers, Inc. v. Canadian Council of Professional Engineers (1992), 41 C.P.R. (3d) 243, (F.C.A., per Hugessen J.A.) which involved the trade-mark LUBRICATION ENGINEER, the Federal Court of Appeal disagreed with the Trial Court’s finding that provincial laws governing the engineering profession justified a finding of a Section 9(1)(d) prohibition, namely that any word or symbol likely to lead to the belief that the wares or services in association with which it is used have received, or are produced, sold or performed under royal, vice-regal or governmental patronage, approval or authority. The Appeal Court simply stated that the “text [of Section 9(1)(d)] simply does not have the effect, as the judge seemed to think, of importing into federal law the various prohibitions against the use of certain professional designations which are contained in the provincial statutes regulating those professions” (Lubrication Engineers, supra at 244). The case was followed in Canadian Council of Professional Engineers v. APA -The Engineered Wood Assn. (1998), 86 C.P.R. (3d) 513 (T.M.O.B., per Herzig) aff’d (2000), 7 C.P.R. (4th) 239 (F.C.T.D., per O’Keefe J., appeal allowed in part, s.30(i) not at issue), where the opponent also cited the above provincial legislation prohibitions as the grounds for a Section 30(i) opposition. Curiously, however, while the Board cited Lubrication Engineers, supra, to rebuff the Section 9(1)(d) ground, it held that the Section 30(i) objection depended upon whether the mark signifies a connection with professional engineers. The Board reasoned that as the 12(1)(b) ground failed, so did the 30(i) opposition. One would have thought the Board would have cited and applied the Court of Appeal 9(1)(d) reasoning to the 30(i) ground as well.
However, in a subsequent Federal Court decision, Canadian Council of Professional Engineers v. John Brooks Company Limited (2004), 35 C.P.R. (4th) 507 (F.C.T.D., per O’Reilly J.), no mention of Lubrication Engineers or The Engineered Wood Assn. was made. Here, use of the word “Engineering” in the trade-mark was at issue, and the opponent argued that the public interest and the prevailing law requires that the term “engineering” be used exclusively by professional engineers. A full analysis of the “provincial laws limiting use of that 26 professional description” was made, with the Court deciding that the applicant was satisfied that it was entitled to use the word “engineering” under the relevant provincial laws. The judge specifically noted that use of the term engineering in a business name is “regulated, not prohibited”. Since the word “engineering” was being used in a way that was held not to be misleading, the argument that the application was contrary to Section 30(i) failed. However, the judge went on to find that the proposed trade-mark BROOKS BROOKS SPRAY ENGINEERING was deceptively misdescriptive of the services and persons providing them, since consumers would assume that the particular services at issue would be performed by professional engineers, and the applicant employed “relatively few engineers”.
A Section 30(i) ground of opposition failed where an opponent sought to rely on the prohibition in the Ontario Medicine Act, S.O. 1991, c. 30 of the use of the designation “physician” by anyone not a member of the College of Physicians and Surgeons of Ontario to oppose an application for PHYSICIAN’S CHOICE for non-medicated skin-care products. The Hearing Officer held that it was not clear that the Act “has any application in the instant case where the term PHYSICIAN is used in the possessive form as a component of a trade-mark for the purpose of identifying the source of wares.” (Canadian Medical Association v. Physician’s Choice of Arizona, Inc. (2005) 46 C.P.R. (4th) 214 (T.M.O.B., per Herzig). The case is also important for the proposition that an opponent seeking to rely on s. 30(i) must plead that the applicant was aware of the fact which the opponent believes disentitles the applicant. In this case, the opponent did not plead that the applicant was aware of the prohibition on the use of the designation “physician” and so the ground of opposition failed for two reasons.
In another case, copyright infringement was alleged indirectly, via a ground of opposition based on Section 30(i). In E. Remy Martin & Co. S.A. v. Magnet Trading Corporation (HK) Ltd. (1988), 23 C.P.R. (3d) 242 (T.M.O.B., per Martin), an argument was made that the design of the applicant’s mark, a centaur design, was an unauthorized copy of an original artistic work in which copyright was owned by the opponent. The opponent therefore argued that the application did not comply with Section 30(i), in that the applicant could not have been satisfied of its entitlement to use the trade-mark. The Hearing Officer noted that the opponent’s evidence made out a prima facie case of copyright infringement, and that the applicant had done nothing to rebut that position (the applicant in fact filed no evidence). He stated that “if, in fact, the applicant has infringed the opponent’s copyright, then it could not have been satisfied that it was the person entitled to registration of its two applied-for marks” (at 246).
However, it should be cautioned that the existence of copyright itself is not sufficient to sustain a Section 30(i) claim. In Jones v. Dragon Tales Production Inc. (2002), 27 C.P.R. (4th) 369 (T.M.O.B., per Herzig), under Section 30(i), the opponent charged that the applicant could not be satisfied that it was exclusively entitled to use the mark because the applicant was not the owner of copyright in 27 a central element of the mark, and that the trade-mark was not distinctive, because the applicant was not the owner of the copyright. Both grounds failed. It was held that a prima facie case of copyright infringement had not been made since too many points of dissimilarity existed and the mere existence of copyright cannot itself prevent a mark from being distinctive.
Non-compliance with Section 7(d) and Section 7(e) of the Act, dealing with acts of unfair competition, may be considered in an opposition. The case of Deputy Attorney-General of Canada v. Biggs Laboratories (Canada) Limited (1964), 42 C.P.R. 129 (Ex. Ct., per Dumoulin J.) is cited for this principle, and has been followed in some decisions (see Bio Generation Laboratories Inc. v. Pantron I, Corp. (1991), 37 C.P.R. (3d) 546 (T.M.O.B., per Herzig), but not in others, (see Canadian Schenley Distillers Ltd. v. Jordan Wines Ltd. (1978), 46 C.P.R. (2d) 74 (T.M.O.B., per Metcalfe)). Biggs supra, involved registration of the trade-mark SHAMMI, for a transparent glove. The judge found the trade-mark to be contrary to Section 7(d)(i), relating to false and misleading descriptions. The trade-mark was also refused on the basis that it was deceptively misdescriptive, making the Section 7(d)(i) comments somewhat superfluous.
Non-compliance with Section 30(i) can be made to fit a variety of issues involving unauthorized use, pursuant to other laws, both common and statute, and certain regulations. This should be kept in mind in drafting an opposition, in order to ensure that all available grounds are canvassed (see Hayhurst, “Trade-mark Oppositions: How “Satisfied” must an Applicant Be?” (1991), 7 I.P.J. 75 for a lucid examination of allegations of non-compliance with other laws, and oppositions based on Section (30)(i)).
b) Non-registrability
Non-registrability refers to the factors set out in Section 12(1) of the Trade-marks Act. In an opposition, the most common grounds are Section 12(1)(a), that the trade-mark is primarily merely a name or surname; Section 12(1)(b), that the trade-mark is clearly descriptive or deceptively misdescriptive; or Section 12(1)(d), that the trade-mark is confusing with a registered trade-mark. i) Section 12(1)(a): Surname of an Individual
A challenge under Section 12(1)(a) first requires a consideration of whether the word sought to be registered is the name or surname of a living individual or an individual who has recently died: “It is when that condition precedent is satisfied, and only then, that consideration need be given to the question of whether the trade-mark applied for is ‘primarily merely’ a name or a surname rather than something else.” (Gerhard Horn Investments Ltd. v. Registrar of Trade-marks (1983), 73 C.P.R. (2d) 23 (F.C.T.D., per Cattanach J.) at p. 30). The trade-mark itself must also be considered in its entirety. In Gerhard Horn, the trade-mark 28 applied for was MARCO PECCI, and although there was some limited evidence of the existence of an individual with the surname Pecci, there was no evidence that someone had the name Marco Pecci: “The name Marco Pecci cannot be the name of an individual if there is no such person.” As there is no impediment to the registration of a fictitious name as such, the mark was held to be registrable. This decision has been followed in Valint N.V. v. Mario Valentino S.p.A. (1999), 4 C.P.R. (4th) 1 (F.C.T.D, per Campbell J.) (the mark MARIO VALENTINO was held to be unregistrable) and in Fédération de l’industrie horlogère suisse v. Maytronics Inc. 2005) 44 C.P.R. (4th) 451 (T.M.O.B., per Tremblay) (the mark CALVIN HILL was held to be unregistrable).
See also Canadian Medical Association v. Dr. C. Soldan (unreported) [2004] T.M.O.B. No. 175 (November 22, 2004) (T.M.O.B., per Bradbury) where the opposition under s. 12(1)(a) to the trade-mark DR. C. SOLDAN failed because, although there was evidence of two telephone listings for “C. Soldan”, there was no evidence that either of these individuals could be addressed as “Dr.”. Similarly, in Canadian Medical Association v. The Enrich Corporation (unreported) [2004] T.M.O.B. No. 176 (November 22, 2004) (T.M.O.B., per Bradbury), an opposition to the trade-mark DR. BERMAN’S failed because the applicant had disclaimed BERMAN apart from the mark. Any addition, however minor, to a name will probably convert the trade-mark from one unregistrable under s. 12(1)(a) to one that is. In Jurak Holdings Ltd. v. Matol Biotech Laboratories Ltd. (2007) 64 C.P.R. (4th) 207 (September 14, 2007) (T.M.O.B. per Carrière) the trade-mark was KARL JURAK 1904-1993. While there was no evidence to rebut the suggestions that the words were a name, the numerical addition prevented the trade-mark from being “primarily merely” a name.
A Practice Notice dated August 16, 2000 indicates that an objection under paragraph 12(1)(a) will only be considered if there are at least 25 entries of the name or the surname located in Canadian telephone directories. If there are 25 entries, then a test to determine primary meaning must be applied. According to the test, the examiners must determine what in their opinion would be the response of the general public in Canada to the word. If they consider that a person in Canada of "ordinary intelligence and of ordinary education in English or French" would respond to the word by thinking of it as the name or the surname of an individual who is living or who has died within the preceding thirty years, an objection under paragraph 12(1)(a) will be raised. For example, in Jurak Holdings v. Matol Biotech (2006), 50 C.P.R. (4th) 337 (T.M.O.B. per Tremblay), an opposition to the trade-mark JURAK under s.12(1)(a) was rejected. The Board held that evidence of 25 telephone listings in Canada of individuals with the surname JURAK did not show it to be a common surname, but rather, a relatively rare surname and that the Opponent's evidence did not show that the majority of Canadians who would recognize "Jurak" as a surname would be greater than the number who would think of it as an invented word.
29 ii) Section 12(1)(b): Clearly Descriptive or Misdescriptive
The question of whether the applicant’s trade-mark is clearly descriptive and thus unregistrable under Section 12(1)(b) must be considered from the point of view of the average purchaser of those wares or services, and the mark must not be dissected into its component elements and carefully analyzed, but considered in its entirety as a matter of first impression. In Wool Bureau of Canada Ltd. v. Registrar of Trade-marks (1978), 40 C.P.R. (2d) 25 (F.C.T.D., per Collier J.) the court held that the trade-mark SUPERWASH would be considered by the ordinary person, when applied to particular woolen goods, to be clearly descriptive of a garment that washed very well, with little or no resultant shrinkage. The application was refused and the appeal dismissed.
The registrability of trade-marks that incorporate descriptive words and designs is addressed in both inconsistent Federal Court decisions and a Trade-mark Office Practice Notice. Historically, if a trade-mark contained descriptive words depicted in fancy type, or with additional design elements, the mark could be registered subject to a disclaimer of the descriptive words. In such a case, the trade-mark was neither clearly descriptive nor non-distinctive. For example, in Fiesta Barbeques Ltd. v. General Housewares Corp., (2003), 28 C.P.R. (4th) 60 at 68-69 (F.C.T.D., per Russell J.) rev’g (2002), 22 C.P.R. (4th) 254 (T.M.O.B., per Partington) the trade-mark included the words GRILL GEAR and design, for barbeque utensils. The design feature was a flame in the letter A in GEAR. Both GRILL and GEAR had been disclaimed. However, while the Opposition Board had held the trade-mark to be clearly descriptive, the Court on appeal held that the trade-mark was not. There was not enough evidence of descriptive use to support that finding. The Court also held that “the verbal components of the subject trade-mark and the flame motif have to be looked at as a whole and clearly give it sufficient distinctive elements to distance it from any terminology a trader might use to describe wares of a similar kind.” (at ¶ 34) The Court also found that the disclaimer of both words was not an admission that the entire trade-mark was not registrable. This has been followed in subsequent Opposition Board decisions, for example, in Eloyalty Corporation v. Loyalty Management Group (unreported) [2004] T.M.O.B. No. 80 (June 3, 2004) (T.M.O.B., per Bradbury), where the Hearing Officer was “not prepared to treat the applicant’s disclaimers as admissions.”
However, a different result arose in Best Canadian Motor Inns v. Best Western International, Inc. (2004), 30 C.P.R. (4th) 481 (F.C., per Gibson J.) aff’g (2002), 23 C.P.R. (4th) 110 (T.M.O.B., per Folz). In that case, the Court, on appeal from the Opposition Board, held that the additional design elements, which were the addition of a maple leaf to the words written in special type, with additional lines above and below the words BEST CANADIAN, did not render the trade-mark registrable, since the words, when sounded, were all clearly descriptive (and had been disclaimed). Rejecting both the Fiesta Barbeques, supra case, as well as a paper summarizing the descriptiveness analysis when the trade-mark includes 30 design elements, the Court held that the rules of statutory interpretation mandate that the “when sounded” test, in Section 12(1)(b), applies regardless of whether there is a design incorporated as part of the trade-mark.
Following the decision, the Trade-marks Office issued a Practice Notice, dated February 16, 2005, which describes changes to the examination practice when applying the provisions of Section 12(1)(b) of the Act to composite marks. Effective immediately, the Office will consider that a composite mark, when sounded, is not registrable pursuant to paragraph 12(1)(b) of the Act if it contains word elements that are:
1) clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the wares or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin; and also
2) the dominant feature of the mark.
In determining whether a word element is the dominant feature of a mark, examiners will consider whether a prospective consumer would, as a matter of first impression, perceive the word element as being the most influential or prominent feature of the mark. In doing so, examiners will look at the mark in its totality, and compare the visual impression created by the word element of the mark to the visual impression created by the design element of the mark. Where the design element of the mark does not stimulate visual interest, the word element will be deemed dominant.
As at the date of writing, there have not been any oppositions reflecting the approach dictated in that Practice Notice with respect to Section 12(1)(b) (as applied to sounded composite marks), so it remains to be seen how the Opposition Board will address oppositions on such grounds moving forward.
In Home Hardware Stores v. Canadian Tire (2006), 51 C.P.R. (4th) 23 (T.M.O.B. per Martin), an opposition to ARGENT CANADIAN TIRE was rejected. The Board held that since the mark was comprised of one French word and two English words, the mark as a whole could not be clearly descriptive or deceptively misdescriptive in the French or English language.
A Practice Note published June 13, 2007 clarifies Trade-marks Office practice with respect to professional designations under section 12(1)(b). The Notice indicates that when confronted with a mark that appears to be a title of a profession, research will be conducted to determine if this is indeed the case. If the mark is the title of a profession, then examiners are to apply the first impression test in light of the applicant's wares and/or services (Wool Bureau of 31
Canada Ltd, supra) to determine if a consumer would assume that the wares or services are produced by a professional from that designation, and thus are clearly descriptive.
The Federal Court has recently found that the word “clearly” in s. 12(1)(b) only applies when one is considering if a mark is descriptive of the character or quality of wares. The decision in Sociedad Agricola Santa Teresa Ltda. v. Vina Leyda Limitada [2007] 63 C.P.R. (4th) 321 (F.C., per Harrington J.) [Vina Leyda] held that once the Registrar found that the applied for mark for wine was identical to a wine producing region of Chile, the application should have been rejected as being clearly descriptive. It did not matter that the average Canadian consumer may not associate the mark with the geographic origin. This should be contrasted with Rothmans Benson & Hedges Inc. v. Matinée Co. (2008) T.M.O.B. No. 41 (February 13, 2008) (T.M.O.B. per Robitaille) where an opposition to BOURGOGNE for tobacco was rejected. While there was evidence that France produced tobacco, there was no evidence that Bourgogne (or Burgundy) was known for tobacco, or that the public would believe the wares originated in Burgundy. iii) Section 12(1)(c): Generic Trade-marks
There are few cases dealing with generic trade-marks, which are unregistrable under Section 12(1)(c). Note that this section makes a trade-mark unregistrable if it is the ‘name’ of the wares or services in any language, whereas Section 12(1)(b), descriptiveness, focuses on descriptiveness in English or French only. Many practitioners, examiners, and even the Opposition Board and the Courts appear to confuse ‘descriptiveness’ with ‘genericness’. For example, query, in Best Canadian Motor Inns, supra, was MOTOR INNS clearly descriptive of the services, or the name of the services? iv) Section 12(1)(d): Confusion
When challenged under s. 12(1)(d), the legal onus is on the applicant to show that, on a balance of probabilities, there is no reasonable likelihood of confusion between the marks at issue. The test for confusion is that set forth in s. 6(2) of the Trade-marks Act, with consideration given to all of the surrounding circumstances including those specifically set out in s. 6(5). In this analysis when considering the wares, services and trades of the parties, it is the applicant’s statement of wares and services that govern (see Mr. Submarine Ltd. v. Amandista Investments Ltd. (1987), 19 C.P.R. (3d) 3 (F.C.A., per Thurlow C.J.); Miss Universe, Inc. v. Bohna (1994), 58 C.P.R. (3d) 381 (F.C.A., per Décary J.A.)). It should be noted that the weight to be given to each factor will depend on the circumstances (Gainers Inc. v. Marchildon et al. (1996), 66 C.P.R. (3d) 308 (F.C.T.D., per Reed J.); Clorox Co. v. Sears Canada Inc. (1992), 41 C.P.R. (3d) 483 (F.C.T.D., per Joyal J.) aff’d (1993), 49 C.P.R. (3d) 217 (F.C.A., per Mahoney J.A.). In practice, the Opposition Board will review and weigh evidence 32 pertaining to each of the s. 6(5) factors, making a finding of whether the factor favours the applicant or opponent.
The test is whether, as a matter of first impression in the mind of an average consumer having a vague or imperfect recollection of another mark, the use of both marks in the same area and in the same manner is likely to lead to an inference that the wares associated with those marks are produced or marketed by the same company (Polo Ralph Lauren Corp. v. United States Polo Assn. (2000), 9 C.P.R. (4th) 51 (F.C.A., per Malone J.A.); (Dion Neckware Ltd. v. Christian Dior, S.A. (2002), 20 C.P.R. (4th) 155 (F.C.A., per Décary)). If a determinative conclusion cannot be reached after evaluating all the evidence, then the issue must be decided against the applicant (John Labatt Ltd. v. Molson Companies Ltd. (1990), 30 C.P.R. (3d) 293 (F.C.T.D., per McNair J.), aff’d (1992), 42 C.P.R. (3d) 495 (F.C.A., per Isaac C.J.)). The test is on “the balance of probabilities”, and not “beyond doubt” (Dion v. Dior, supra).
In TELUS Corporation v. Orange Personal Communications Services Ltd. (2005), 39 C.P.R. (4th) 389 (F.C., per Mactavish J.) aff’d by 2006 F.C.A. 6, the opponent, who owned a number of FUTURE trade-marks, appealed an Opposition Board ruling which had allowed the registration of the mark THE FUTURE’S BRIGHT, THE FUTURE’S ORANGE:
The Board’s statement that it was incumbent on Orange “to establish on a balance of probabilities that there would be not reasonable likelihood of confusion between the marks in issue” is awkwardly worded. However, when regard is had to the statement itself, and to the analysis actually carried out by the Board, it is evident that the test applied by the Board was that espoused in the Dion Neckware decision. As a consequence, I am satisfied that the Board correctly identified the standard of proof that Orange had to satisfy in order to be entitled to register the “Future’s Bright” mark.
The Federal Court used the following guide: “it was more probable than not that consumers would not believe the wares or services associated with the "Future's Bright" mark share the same source as wares or services associated with the "The Future is Friendly" mark” (at para. 60).
v) Section 12(1)(e)-(j): Prohibited Marks
Section 12(1)(e) to 12(1)(j) prohibits the registration of marks that are contrary to a variety of provisions including official marks and marks protected under the new Olympic and Paralympic Marks Act passed in 2007 or words covered by s.10 (where a mark, by ordinary and bona fide commercial usage, has become recognized in Canada as designating the kind, quality, quantity, destination, value, place of origin or date of production of any wares or services). A Section 9 33 prohibition will not prevent the use of a previously registered trade-mark, or the continued use of a previously used mark. See Royal Roads University v. Canada (2003), 27 C.P.R. (4th) 240 (F.C., per MacKay J.) and Allied Corp. v. Canadian Olympic Association (1989), 28 C.P.R. (3d) 161 (F.C.A., per MacGuigan J.A.).
A recent Federal Court case provides an example of an opponent mounting a successful s. 12(1)(e) objection pursuant to s. 10. In Scotch Whisky Association v. Glenora Distillers International Ltd. (2008) 65 C.P.R. (4th) 441 (F.C., per Harrington J.), the opponent,, the Scotch Whisky Association, argued that the word GLEN, inter alia, is misdescriptive of the place of origin of the whisky. The applicant, Glenora Distillers, was applying for GLEN BRETON, in association with their whisky produced in Nova Scotia. The Court agreed with the opponent, finding that Canadian consumers have come to associate GLEN with whisky produced in Scotland. Compare this decision with Vina Leyda, supra.
Note that the case of Canada Post v. United States Postal Service (2005), 47 C.P.R. 4th 177 (F.C.T.D., per Mactavish J.) aff’d 2007 FCA 10 (F.C.A., per Sharlow, J.A.) confirms that for section 9(1)(n)(iii), the “public authority” must be a public authority in Canada.
In See You In Canadian Athletes Fund Corporation v. Canadian Olympic Committee (2007), FC 406 (F.C. per Phelan J.) [See You In], the Federal Court quashed the decision of the Registrar to publish notice of the adoption and use of the marks as official marks by the COC. It held that a mere statement by the public authority that it had adopted and used a mark was not sufficient in itself to prove that such adoption and use had occurred. Instead, a request for publication of an official mark under s. 9(1)(n)(iii) must show evidence of how the mark has been adopted and used, which requires some evidence of public display. As for the issue of whether the COC was a public authority, the Court cited Ontario Association of Architects v. Association of Architectural Technologists of Ontario (2002), 19 C.P.R. (4th) 417 (F.C.A. per Evans J.A.) for the test that for an organization to be a public authority (1) there must be a significant degree of public control and (2) the organization must exist for the public benefit. The Court noted that the test was not an absolute control test, but required a sufficiently significant degree of government control. In this case, the Court affirmed that control does exist, given the cooperation, funding and overall involvement of the government with the COC. The Court further found no reason to conclude that the COC does not exist for the public benefit, even though certain of its actions "such as attempting to take away the Applicant's trade-mark rights" were not beneficial to the public.
The finding in See You In that the COC was a public authority avoided further scrutiny on appeal. Despite winning its case, the SYI Fund appealed the Federal Court’s finding that the COC was a public authority under s. 9 of the Act. The appeal was dismissed as “a party who has obtained the relief it sought is not 34 normally entitled to appeal against the judges’ reasons. [The Court saw] no basis for making an exception in this case, however useful to the appellant a ruling in its favour may possibly be in the future.” See You In – Canadian Athletes Fund Corp. v. Canadian Olympic Committee [2008] 65 C.P.R. (4th) 421 (F.C. C.A., per Evans J.A.).
Following the See You In, supra, case, the Trade-marks Office issued a Practice Notice, dated August 22, 2008, confirming that the Office will require evidence of public authority status (referring to the 2-part test above), on every request for public notice, and will also require evidence of the adoption and use of the official mark. A "public display" of the mark is required. The Practice Notice indicates that a website reference will suffice, but internal use will not. The public display must show the "mark", and not a descriptive use. And, while there are contradictory cases on this point, the Practice Notice indicates that use by a licensee will not be acceptable. Instead, the evidence must show adoption and use by the public authority. c) Non-entitlement
An opposition on Section 16 non-entitlement grounds involves an assessment of the relative priority rights between two allegedly confusing trade-marks. In 2005, the Federal Court of Appeal in Attorney General of Canada v. Effigi Inc. 41 C.P.R. (4th) 1 (F.C.A., per Décary J.A.), aff’g (2004), 35 C.P.R. (4th) 307 (F.C., per Shore J.) issued a decision which fundamentally changes examination procedures, and will probably lead to more oppositions.
Until this decision, examiners in the Trade-marks Office considered the issue of priority between competing applicants by considering the competing use, filing or convention priority dates. As between two applicants filing on use, as long as both applications were still in examination, the applicant who claimed to have first use would have its application proceed to advertisement, and the later applicant would be refused. As between two applicants filing on proposed use, the earliest filed applicant would proceed. As between a proposed use and a use application, the applicant with the earlier of the filing and use dates would proceed. The Trade-marks Office would make no assessment based on evidence of the use claim. Instead, it would accept that the applicant correctly stated its use.
However, the Court in Effigi, supra, disapproved of this practice, and interpreted Section 37(1)(c) of the Trade-marks Act to require the Registrar to refuse an application if there was an earlier pending application, regardless of the grounds. That section reads:
37. (1) The Registrar shall refuse an application for the registration of a trade-mark if he is satisfied that
35
…
(c) the applicant is not the person entitled to registration of the trade-mark because it is confusing with another trade-mark for the registration of which an application is pending
Accordingly, now, if an applicant files on the basis of proposed use or use, and another applicant subsequently files on the basis of earlier use, the second applicant, ostensibly with the earlier priority date, will be in the position of having to oppose, but can do so on non-entitlement grounds. In a Practice Notice dated May 25, 2005, the Trade-marks Office indicated its adoption of the Effigi approach.
The key difference between an opposition under Section 12(1)(d) and one under Section 16 are the material dates, depending on the ground of filing [see discussion on material dates, below]. Otherwise, the confusion analysis is the same and the Opposition Board will frequently come to the same conclusion for a ground of opposition under s. 16 as for a s. 12(1)(d) ground, on the condition that the difference in material dates is not material to the decision (it generally is not material and both analyses, if conducted, will tend to arrive at the same outcome). d) Non-distinctiveness
A trade-mark may be non-distinctive for several reasons: it is confusing with a previously used trade-mark or trade name or a registered trade-mark, it is clearly descriptive or generic, and thus not a trade-mark, and thus can't distinguish any one, or it is a term that has developed a trade meaning (as in s. 10). In most oppositions, the ground relates to confusion with another's trade-mark. That could be the trade-mark of the opponent, and/or others.
In order to succeed on the ground of lack of distinctiveness referring to another's mark, it is not necessary to show that the such trade-marks or trade names have become “well known” in Canada in the technical sense of Section 5 of the Trade- marks Act. Rather, “it is sufficient to establish that [the opponent’s mark] has become known sufficiently to negate the distinctiveness of the mark under attack.” (Motel 6, Inc. v. No. 6 Motel Ltd. et al. (1981), 56 C.P.R. (2d) 44 (F.C.T.D., per Addy J.) In this case the court found that, because of the established good will and reputation the plaintiff had developed in Canada and maintained throughout the relevant timeframe, the plaintiff’s name, mark and logo had become known through sections of British Columbia. As a result, the defendant’s mark was not distinctive of its services.
The Federal Court has recently clarified the appropriate test for this ground in Bojangles’ International LLC v. Bojangles Café Ltd, 2006 FC 657 (per Noël J.): “A mark must be known to some extent at least to negate the established 36 distinctiveness of another mark, and its reputation in Canada should be substantial, significant or sufficient” enough to negate the distinctiveness of the applicant's trade-mark.
Non-distinctiveness and confusion under ss. 12(1)(d) or 16 are related, since if the applicant’s mark is found to be confusing with that of the opponent, it cannot, by definition, be found to be distinctive of the applicant. It is perhaps no surprise, then, that a majority of decisions that based an opposition on confusion also include a ground of opposition based on non-distinctiveness. And, as is the case with confusion, non-distinctiveness may be shown by reference to the marks of third parties. Thus, in Credit Union Central of Canada v. Community Credit Union Ltd., (2005) 48 C.P.R. (4th) 226 (T.M.O.B., per Bradbury), the Board in its discussion of the distinctiveness ground opposition stated that “the opponent may rely on evidence of use of the worlds COMMUNITY CREDIT UNION by third parties, even though such parties were not identified in the statement of opposition”.
2) Relevant Dates
The question of the relevant date is critical to both the grounds of opposition and the evidence that can be filed by the parties in an opposition. Furthermore, the ability of an opponent to amend its application to add a new ground of opposition is affected by whether the relevant date for that ground is the application date, the date of the Statement of Opposition, or the hearing date. The Act and cases make it clear that there are, in fact, several relevant dates, which depend upon the specific ground of opposition.
As noted above, there are four grounds of opposition:
(i) non-compliance with Section 30;
(ii) non-entitlement;
(iii) non-registrability;
(iv) non-distinctiveness.
Each of these grounds has a relevant date, which is the last date on which evidence relating to that issue will be considered admissible.
a) Section 30 The most common grounds of opposition pertaining to Section 30 are found in subsections (a) that the wares or services are not in ordinary commercial terms, (b) that the trade-mark has not been used since the date of first use alleged, or 37 not at all, and (i) that the applicant cannot have been satisfied that it was entitled to use the trade-mark. In Delectable Publications Ltd. v. Famous Events Ltd. (1989), 24 C.P.R. (3d) 274 (T.M.O.B., per Martin), the opponent’s sole ground of opposition was that the services were not in ordinary commercial terms. The Hearing Officer stated that the material date for this ground is the filing date of the application. However, he quoted, as being “of assistance”, the decision of Eaton Williams (Millbank) Ltd. v. Nortec Air Conditioning Industries Ltd. (1982), 73 C.P.R. (2d) 70 (T.M.O.B., per Partington), where it was noted that an amendment after filing to meet the requirements of the Act, as might be requested by an Examiner, ought not to be held against an applicant. That makes sense, since probably more than 70% of all applications are amended after filing to provide further particulars of wares or services. It would be ludicrous to say that all of these applications are fatally flawed.
In fact, the Trade-marks Office will permit parties to amend wares and services even during opposition proceedings, so that the more relevant date to assess this issue appears to be the date of the hearing, or decision on the issue.
With respect to Section 30(b), the Opposition Board has now held on several occasions that the relevant date for arguments about use or non-use of a trade- mark is the filing date of the application (for example, John Labatt Ltd. v. Molson Companies Ltd.1990, supra) approving the Registrar’s decision to reject evidence after the relevant date (David Grains Enterprises Inc. v. Forsyth Trading Co. (1991), 37 C.P.R. (3d) 369 (T.M.O.B., per Martin), and Star Shipping A/S/ v. Starship Transportation Inc. (1996), 70 C.P.R. (3d) 373 (T.M.O.B., per Herzig)).
Non-compliance with Section 30(e), regarding intent to use the mark, has been used as a ground of opposition where an opponent alleges that the applicant itself did not intend to use a trade-mark. In Canadian National Railway Co. v. Schwauss (1991), 35 C.P.R. (3d) 90, (T.M.O.B., per Herzig), the Hearing Officer followed John Labatt Ltd. v. Molson Companies Ltd. 1990 supra to say that the same considerations apply to an opposition based on non-compliance with Section 30(e) as to Section 30(b), regarding onus and burden of proof, and relevant dates.
With respect to Section 30(i), that is whether the applicant is satisfied of its right to use the trade-mark, the case of Canadian Olympic Association v. Les Methodes Sportives Gaetan Menard Inc. (1987), 15 C.P.R. (3d) 544 (T.M.O.B., per Troicuk) suggests that the relevant date is the date of the application (see also E. Remy Martin, supra.) This seems reasonable, since if an applicant is not satisfied of its right to proceed, then the application seems fatally flawed from the beginning. 38
b) Entitlement
The relevant dates for entitlement are clearly set out in Section 16. Either the filing date, for applications based on proposed use and use and registration abroad, or the date of first use or making known, where the application is based upon either use or making known, will be relevant unless a convention priority claim is also made (see, for example, Gillette Company v. Esselte Pendaflex Canada Inc. (1991), 39 C.P.R. (3d) 276 (T.M.O.B., per Herzig) and Kayser-Roth Corp. v. William H. Kaufman Inc. (1991), 36 C.P.R. (3d) 256 (T.M.O.B., per Martin)).
This can lead to interesting results. In ConAgra, Inc. v. McCain Foods Ltd. (2001), 14 C.P.R. (4th) 288 (F.C.T.D., per Blais J.), grounds of opposition based on confusion with the opponent’s previously filed applications were considered, despite the abandonment, by the hearing date, of these applications. While an opponent cannot have abandoned a mark relied upon in an opposition when it drafts and files its opposition (s. 17(l)), subsequent abandonment will not be held against it where entitlement is the relevant ground of opposition.
In Weetabix, supra, the Court held that any evidence subsequent to the priority date (in that case, the filing date for the proposed use application for FRUIT DOTS) would not be admitted on the issue of entitlement.
Metro-Goldwyn-Mayer Inc. v. Stargate Connections Inc. (2004), 34 C.P.R. (4th) 317 (F.C., per Simpson J.) confirmed that the relevant date for the assessment of confusion under s. 16 where the applicant claims use is the date of first use (this case involved a challenge under ss. 16(1)(a) and 16(1)(b)). This case has been frequently followed in recent Opposition Board decisions.
c) Registrability
This issue most frequently arises with respect to an allegation of confusion with a registered trade-mark (Section 12(1)(d)), but there are also cases considering Section 12(1)(b), on descriptiveness, and Section 12(1)(e), on failure to comply with Sections 9 or 10.
The relevant date for determining confusion with a registered trade-mark was originally considered to be the date of filing the statement of opposition. However, Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413 (F.C.A., per Desjardins J.A.), which is now frequently cited, held that the date when the matter is disposed of should prevail, on the basis that this was “generally applicable” in adjudicating matters. The decision of the Registrar should be “taken on an accurate state of the record. Registrability 39 should be decided at the date of registration or at the date of refusal of registration” (Park Avenue, supra at 424). Accordingly, if any trade-mark relied upon by the registrant in its Statement of Opposition is expunged or cancelled during the proceedings, it will not be considered in the Opposition Board’s decision on section 12(1)(d). (See, for example, Wallace International Silversmiths, Inc. v. Stanley Roberts, Inc. (unreported) [2005] T.M.O.B. No. 209 (August 12, 2005) (T.M.O.B., per Bradbury).). However, if the opponent also relied upon non-entitlement, or lack of distinctiveness, the mark might still be relevant.
For an interesting decision on relevant dates, see Everlast World’s Boxing Headquarters Corporation v. Amethyst Investments Group, Inc. (2004), 33 C.P.R. (4th) 307 (F.C., per Pinard J.), where an opponent relied upon a registration that was ordered by the Trade-marks Office to be expunged under Section 45 prior to the opposition decision, although the decision was not made final until after the opposition decision. On appeal, Pinard J. held, without discussing relevant dates, that there could be no confusion with an expunged trade-mark. (See also, Wallace International, supra).
Registrability issues pertaining to Sections 9 and 10 are also determined as of the date of the decision. See Allied Corp. v. Canadian Olympic Association, supra, which has been followed in Canadian Olympic Association v. Olympus Optical Company Limited (1991), 38 C.P.R. (3d) 1 (F.C.A., per Stone J.A.), and in several opposition decisions (see, for example, The Ontario Federation of Anglers and Hunters v. F.W. Woolworth Co. (1991), 39 C.P.R. (3d) 272 (T.M.O.B., per Martin) and Sealy Canada Ltd. v. Simmons I.P. Inc. (2005), 47 C.P.R. (4th) 296 (T.M.O.B., per Folz)). In those cases, Section 9 notices published after the applicant’s date of first use or the statement of opposition were considered relevant to the issue of registrability. The relevant date for this ground appears to be the date of the hearing or decision.
For oppositions relying upon non-registrability for Section 12(1)(b) descriptiveness grounds, it is apparently the filing date that should be considered. There has been some debate on the issue. For example, in Lubrication Engineers, supra, dealing, inter alia, with a descriptiveness (Section 12(1)(b)) attack on an application, it was held that the Registrar wrongly considered the filing date to be the relevant date for considering descriptiveness in the opposition, and suggested that it is the hearing date which is the relevant date. Some subsequent cases have followed Lubrication Engineers, supra: for example, Apotex Inc, supra; Wal-Mart Stores, supra; Pillsbury Co., supra.
However, more recent Federal Court and Opposition Board decisions have distanced themselves from that position. The practice of the Opposition Board is now to consider the date of filing as the relevant date. In Fiesta Barbeques Ltd. v. General Housewares Corp. 2003 supra, the judge, in overturning the Opposition Board decision, was conscious of the ruling in Lubrication Engineers, but declared the comments there to be obiter dicta, and instead relied upon an 40 old line of cases, including a Supreme Court of Canada decision, Lightening Fastener Co. v. Canadian Goodrich Co., [1932] S.C.R. 189 (per Anglin C.J.C.), to come to the conclusion that the relevant date is the date of filing. Havana Club Holdings v. Bacardi (2004), 35 C.P.R. (4th) 541 (T.M.O.B. per Carrière) (for the mark OLD HAVANA), followed the appeal decision in Fiesta Barbeques and further emphasized that it made more sense to have the relevant date for Section 12(1)(b) and its “saving” provision in Section 12(2) be the same. (See also Havana Club Holdings v. Bacardi (2004), 35 C.P.R. (4th) 559 (T.M.O.B., per Carrière) decided the same day for the mark HAVANA SELECT) and Canadian Council of Engineers v. Management Engineers GmbH (2004), 37 C.P.R. (4th) 277 (T.M.O.B., per Herzig). However, a spirited argument on the date was made in this latter case, disputing the earlier Fiesta analysis of which decisions were made on obiter dicta findings, and the Hearing Officer went so far as to state that “While I find that there is much merit to counsel’s arguments, I cannot say unequivocally that the Board in Zorti Investments [see below] … was clearly wrong in adopting the date of filing as the material date in respect of Section 12(1)(b)”. However, no reference to the debate was made in the Federal Court decision in Shell Canada Limited v. P.T. Sari Incofood Corporation (2005), 41 C.P.R. (4th) 250 (per MacKay D.J.), which cited Fiesta and Lightening Fastener for the proposition that the relevant date for assessing the registrability of a trade- mark pursuant to paragraph 12(1)(b) is the filing date of the application. A number of recent T.M.O.B. decisions have followed the Shell decision.
Several recent Opposition Board decisions have held that the material date for deciding a s. 12(1)(a) ground of opposition is also the filing date of the application. See Calvin Klein Trademark Trust v. Wertex Hosiery Inc. (2004), 41 C.P.R. (4th) 552 and Jurak Holdings Ltd. v. Matol Biotech Laboratories Ltd. (unreported) [2006] T.M.O.B. No. 36 (March 3, 2006) (T.M.O.B., per Tremblay).
Under Section 12(2), the statute makes it clear that the applicant must show acquired distinctiveness as of the filing date of its application. Therefore, for trade-marks relying on Section 12(2), the filing date, rather than the hearing date, is the relevant date, of (Molson Breweries v. John Labatt Ltd. (2000), 5 C.P.R. (4th) 180 (F.C.A., per Rothstein J.).
Similarly, for applications relying upon Section 14 to overcome a descriptiveness objection, the Opposition Board has held that the filing date should be the relevant date. In Zorti Investments Inc. v. Party City Corporation (2004), 36 C.P.R. (4th) 90 (T.M.O.B., per Martin), the Hearing Officer reviewed the cases on Section 12(1)(b), and held that to use a later date “would not only be logically inconsistent but would appear to unfairly advantage a foreign applicant over a domestic applicant who must evidence that his clearly descriptive mark has become distinctive as of the filing date of the application”. In that case, the applicant did not succeed, and its Section 14 claim was unsuccessful since the United States registration upon which it relied did not issue until after the filing date of the application. A similar result is found in A. Lassonde Inc. v. Citrus 41
World, Inc.(2004), 42 C.P.R. (4th) 348 (T.M.O.B., per Carrière), where the opposition included non-distinctiveness grounds. The applicant had relied upon Section 14 to overcome a descriptiveness objection during prosecution. However, the applicant’s foreign registration did not issue until after the application was filed.
d) Distinctiveness
The relevant date on the issue of distinctiveness has traditionally been the date of the Statement of Opposition. This was set out in Andres Wines Ltd. and E. & J. Gallo Winery (1975), 25 C.P.R. (2d) 126 (F.C.A., per Thurlow J.), and had been followed by the Opposition Board since then.
However, in 1994, Mr. Justice Denault, in Clarco Communications Ltd. v. Sassy Publishers Inc. (1994), 54 C.P.R. (3d) 418 (F.C.T.D.) followed a more recent Court of Appeal case to find that the relevant date for all opposition issues, including distinctiveness, was the date of the decision. The same judge relied upon his own decision, in Automobile Club de l’Ouest de France (ACO) v. Bridgestone/Firestone Inc. (1995), 62 C.P.R. (3d) 292 (F.C.T.D., per Denault J.) on this issue again.
Since then, the Opposition Board has refused to follow these decisions. Instead, the Opposition Board and the Courts, in several subsequent decisions, have held that the relevant date for determining distinctiveness is the date of the original, or amended statement of opposition (see Molson Breweries v. Swan Brewery Co. (1994), 58 C.P.R. (3d) 303 (T.M.O.B., per Partington); Hume Publishing Co. Ltd. v. Successful Money Management Seminars Inc. (1995), 65 C.P.R. (3d) 117 (T.M.O.B., per Herzig); Cellular One Group v. Brown, now standing in the name of Bell Mobility Cellular Incorporated (1996), 69 C.P.R. (3d) 236 (T.M.O.B., per Martin); BAB Holdings, Inc. v. The Big Apple Ltd (2002), 16 C.P.R. (4th) 427 (F.C.T.D., per McKeown J.); and Advance Magazine Publishers Inc. v. Casciato (unreported) [2004] T.M.O.B. No. 71 (April 14, 2004) (T.M.O.B., per Bradbury)). The Board’s view has been supported by American Assn. of Retired Persons v. Canadian Assn. of Retired Persons (1998), 84 C.P.R. (3d) 198 (F.C.T.D.) where Reed J., in following Andres Wines, supra, reviews the case law and finds that Denault J.’s position has not been followed by any other Federal Court. (N.B. – in Molson Breweries v. John Labatt Ltd. 2000, supra the Federal Court of Appeal commented on the Andres Wines, supra, finding regarding the relevant date as being only obiter dicta, possibly opening the door for further arguments about which date is relevant.)
An apparent exception to the assessment of distinctiveness as of the filing of the statement of opposition is where an applicant has relied upon Section 12(2) to support its application, which requires it, as discussed above, to show that its trade-mark is distinctive as of the filing date. 42
An opposition commonly takes at least three years, from filing the statement of opposition to decision, and can take much longer. The facts upon which a party wishes to rely on an opposition may fluctuate throughout the proceedings. During that time, trade-marks may be cancelled or expunged, new marks may issue to registration or be published for opposition, and the extent and nature of use may change, making it vital for the parties to keep on top of the proceedings, and make sure all relevant grounds of opposition have been pleaded and all relevant evidence has been filed.
3) Pleading all Relevant Grounds
An opponent must set out all of the grounds upon which it wishes to rely in its Statement of Opposition. If a particular ground is not claimed, it may be difficult for an opponent to later argue that the application ought to be refused on that ground. a) Can Opposition Board Only Decide Opposition on the Basis of Pleadings?
Normally, the Opposition Board will not make decisions based on grounds of opposition not pleaded. (see Practice Notice dated November 8, 2006, replaced by a notice entitled "Procedure before the Trade-marks Opposition Board as of October 1, 2007"). However, if the evidence and argument make it clear that a ground is being relied upon, even if not properly pleaded, and especially where the applicant responds to the argument, the Registrar should consider the ground. (see Coastal Culture Inc., supra.)
In Imperial Developments Ltd. v. Imperial Oil Limited (1984), 79 C.P.R. (2d) 12 (F.C.T.D., per Muldoon J.), the Court ruled that it was not within the jurisdiction of the Opposition Board to decide an opposition on grounds not pled in the Statement of Opposition. In this case, the Hearing Officer had refused an application on the basis of non-distinctiveness, even though the opponent had not raised the issue. Similar results can be found in Molson Breweries, a Partnership v. Schlossbrauerie Kaltenburg Irmingard Prinzessin Von Bayern KG (1991), 40 C.P.R. (3d) 543 (T.M.O.B., per Partington), Novopharm Ltd. v. Astra Aktiebolag (2000), 6 C.P.R. (4th) 101 (T.M.O.B., per Martin), aff'd (2001), 15 C.P.R. (4th) 479 (per Kelen J.) and Arden Holdings Inc. v. DCNL, Inc. (unreported) [2002] T.M.O.B. No. 84 (June 6, 2002) (T.M.O.B., per Martin).
b) Parties Cannot Raise New Grounds of Opposition Except Pursuant to Pleadings
Occasionally, evidence may come to light during the course of an opposition, suggesting that additional grounds of opposition may be relevant. For example, 43 when compiling the opponent’s evidence, it may be apparent that an opponent uses a certain word or phrase as both a trade-mark and trade name. If prior use of a confusing trade name was not originally relied upon, the Statement of Opposition ought to be amended, rather than simply attempting to rely on this ground in argument or at the hearing (see “Amending Statements of Opposition”, below). An opponent should be careful, both in initially drafting the Statement of Opposition and when reviewing both the evidence of the opponent and that of the applicant, to carefully consider whether all available grounds of opposition have been included. Failure to do so may result in the opponent waiving its right to rely on a useful or pertinent argument (See Arden Holdings, supra, where the opponent was not permitted to advance an argument of non-distinctive use since it had not pleaded such a ground in its Statement of Opposition).
4) Grounds Must be Pleaded to Sufficiently Permit an Applicant to Reply a) The Grounds of Opposition must be Pleaded Completely
As stated in Section 38 (3)(a) of the Trade-marks Act, the statement of opposition must contain “the grounds of opposition in sufficient detail to enable the applicant to reply thereto.”
An applicant needs to know the case it must meet. The evidentiary burden and legal onus on an applicant in an opposition is considerable, and it cannot meet these obligations if it does not know what the opponent’s case is about. For that reason, an opponent must set out enough detail in its statement of opposition to permit an applicant to clearly understand both the specific arguments against it, and the basis for the opponent’s position. Obviously, it is at the evidentiary stage that the facts relied upon by both parties must be introduced. The opponent should not be required, in its Statement of Opposition, to set out all the facts relied upon. At the same time, the nature of the case should be easily identified, so an applicant can make an informed decision about whether to proceed.
Once a Statement of Opposition is filed, the Opposition Board will review it to ensure that there is at least one validly pleaded ground. The Board does not go beyond that. It is then up to the parties to proceed with the grounds as drafted.
Traditionally, parties raise issues regarding the sufficiency of pleadings in their written arguments. In fact, until recently, the Trade-marks Office practice was to advise parties that it could not rule on pleadings issues until after all evidence and written arguments have been filed – i.e. in the final decision. However, that may be too late for an applicant who has failed to understand or appreciate the opponent’s case. The Federal Court of Appeal criticized the practice of the Registrar of waiting for the hearing or decision to deal with issues of the sufficiency of pleadings (Novopharm Ltd. v. Ciba-Geigy Canada Ltd; Novopharm, 44
Ltd. v. Astra Aktiebolag (2001), 15 C.P.R. (4th) 327 (F.C.A.). The Court stated at 40 and 41:
The Registrar seems to have adopted the practice of considering the sufficiency of the statement of opposition not as an interlocutory matter, but in conjunction with a consideration of the merits of the opposition. This practice not only runs the risk that the Registrar’s decision on the procedural matter will be contaminated by the evidence in the record that was not available at the time the statement of opposition was filed, but it also seems strikingly inefficient.
The sufficiency of pleadings should, in our view, be determined on an interlocutory basis. Possible amendments with leave under section 47 of the Act and section 40 of the Regulations may then be open to the parties prior to evidence.
Following such comments, in 2006 the Opposition Board implemented a policy whereby applicants can object to Statements of Opposition. The Opposition Board will only consider objections made regarding the Statement of Opposition and will only do so if the objection is made before the Counter Statement is submitted (see Practice Note dated November 8, 2006). Objections can be made by letter to the Trade-marks Office following the receipt of the Statement of Opposition, and should identify the specific objections to any particular grounds. The Trade-marks Office follows up with a letter to the opponent, confirming that objections have been raised, and in some cases, has indicated that the pleadings will be struck unless a response is filed. The opponent is given a defined period of time within which to respond. Other deadlines, for example, for filing a counter statement, continue to run during this term, and applicants should be careful to request any necessary extensions of time, pending finalization of the grounds of opposition. b) Cases on Sufficiency of Pleadings
In the case of Hystar Aerospace Development Corp. v. Hi-Star Marine Co. (1991), 36 C.P.R. (3d) 570 (T.M.O.B., per Martin), the Hearing Officer noted that the statement of opposition referred to “non-compliance with Section 30”, with no specific details. In argument, the opponent argued that the statement of intended use in the application was erroneous. In assessing this argument, the Hearing Officer indicated his confusion about the nature of the argument. While Section 30 was referred to, nothing specific was said about which subsection was relevant. The Hearing Officer therefore found that he was precluded from considering such grounds, but stated “I would note in passing, however, that if such a ground had been raised, it might well have been successful” (Hystar, supra at 573). Such statements are embarrassing, to say the least! Hystar is 45 illustrative of both failing to plead a specific ground and failing to plead in sufficient detail, as discussed below.
In Continental Bazar v. Festival International de Jazz de Montreal (2006), C.O.M.C. No. 163 (T.M.O.B. per Tremblay) one of the grounds of opposition was as follows:
The trade-mark “FESTIVAL INTERNATIONAL DE JAZZ DE MONTREAL” is not registrable, having regard to the provisions of Section 12(1)(b), in that such trade-mark is clearly descriptive of the character or quality of the wares and services in association with which it has allegedly been used and/or of their place or origin.
The wording merely repeats the language of section 12(1)(b) and did not refer to any facts. The Board held that the opposition was not validly pleaded since it did not disclose any fact in support of the Opponent’s allegations. This seems unduly restrictive. While, for example, a confusion argument would need further details of the opponent's confusing use, descriptiveness only reflects the applicant's mark, and not its wares or services.
In Novopharm Ltd. v. Astra Aktiebolag (1999), 1 C.P.R. (4th) 403 (T.M.O.B., per Herzig), the application for PINK TABLET Design was opposed, inter alia, on the grounds that: Section 30 was not complied with since the mark is not a trade- mark; the applicant is not the person entitled to registration pursuant to Section 16(1) because confusingly similar tablets had been used by the opponent; and the trade-mark is not distinctive in that the tablets are common to the trade and had been used by others (the opponent listed 26 companies that it alleged used confusingly similar tablets). The Board found that each ground failed on the basis that the grounds were not set out in sufficient detail to enable the applicant to reply. Specifically the opponent failed to provide facts explaining why the applied- for trade-mark is not a trade-mark, or indicate exactly which of its products (i.e. pink tablets) it is relying upon in its 16(1) ground; and with respect to the 26 companies, the specific products relied on, the ingredients therein, the shape thereof, or any information indicating where, when and how these products were used. The Board explained that, in its view, “the applicant should not be faced with the burden of investigating what products are sold by the opponent, and by third parties, in an attempt to discover which pink tablets the opponent may possibly be referring to” (Novopharm 1999 supra at 408) (also see Novopharm Ltd v. Astra Aktiebolag (1999), 1 C.P.R. (4th) 397 (T.M.O.B., per Herzig)).
The Novopharm pink tablet decision, above, was appealed to the F.C.T.D. (and dismissed) and then to the F.C.A. (Novopharm 2002, supra). Novopharm’s affiant had sworn that pink tablets were on the market in 1992 and provided excerpts of the Compendium of Pharmaceutical Specialties (CPS) which included pictures and indicated the colour and shape of tablets, the name of tablets and the manufacturer of the tablets. Astra’s affiant had also admitted in 46 cross-examination that he was aware of specific pink tablets in the marketplace. This information was, however, not considered by the Registrar. The Registrar had reviewed the sufficiency of the pleadings only on the basis of how the pleadings were drafted, and not in conjunction with the evidence, including cross- examination. The F.C.A. held that once evidence is filed, “regard must be had to the evidence, as well as the Statement of Opposition, to see if the applicant has been provided with sufficient detail to make an adequate reply.” (Novopharm 2002, supra at 293). The additional evidence, when considered with the Statement of Opposition, was considered sufficient and the appeal was allowed.
A review of other cases suggests that the Opposition Board is not entirely consistent in its approach on this issue. Where there may be some imperfections in the Statement of Opposition, the Board normally will assess whether the applicant could still understand the nature of the case it had to meet. Hystar, supra, for example, is understandable in stating that it is not sufficient to say “non-compliance with Section 30” as a ground of opposition, since there are nine subsections to that section, and the specific one relied upon must be set out.
On the other hand, a specific reference to section numbers may not be necessary. For example, in Sun Squeeze Juices Inc. v. Shenkman (1990), 34 C.P.R. (3d) 467 (T.M.O.B., per Savard), the opponent referred in its Statement of Opposition to confusion with its registered trade-mark. No specific reference was made to Section 12(1)(d) (non-registrability because of confusion with a registered trade-mark). In noting that the omission was somewhat technical, and that there was no prejudice to the applicant, this deficiency was not found to be serious. Similarly, in Salomon S.A. (France) v. Powder Blades Pty Ltd. (2000), 6 C.P.R. (4th) 275 (T.M.O.B., per Herzig) the Board accepted, “in the absence of any submissions from the applicant”, a Section 12(1)(d) opposition pleading that did not specifically refer to Section 12(1)(d), noting that the allegations were nonetheless sufficient to support a Section 12(1)(d) opposition. Moreover, in Albert Fisher Canada Limited v. Farmers’ Rice Cooperative (unreported) [2000] T.M.O.B. No. 59 (April 6, 2000) (T.M.O.B., per Bradbury), the opponent incorrectly referred to entitlement rather than registrability in its Section 12(1)(d) pleading and failed to allege that its mark was previously used in its Section 16(1)(a) opposition. Both errors were treated as mere technical deficiencies, with the Board noting with respect to the latter deficiency that the applicant raised no objections to the pleading and apparently understood the opponent to be claiming prior use.
However, the Board apparently did not take the same practical approach in Unisys v. Leitch Technology Corp. (unreported) [2000] T.M.O.B. No. 10 (January 31, 2000) (T.M.O.B., per Partington), where the opponent alleged, inter alia, that the applicant was not the person entitled to registration as the applicant’s mark was, at the time of filing, confusing with the opponent’s registered mark. As confusion between an applicant’s mark and a registered mark is a ground of opposition under 12(1)(d), but not a basis for challenging entitlement to 47 registration under 16(3), the Board did not consider confusion under 12(1)(d) because of the mispleading. The opponent’s entitlement (16(3)(a)) grounds failed as it was unable to establish prior use of the mark and so the issue of confusion was not considered. The Board noted that had the opponent properly pleaded the 12(1)(d) ground of opposition or established use, the results of the opposition may well have been different.
Similarly, in Desjardins Sécurité Financière v. The Tokyo Marine and Fire Insurance Co. (unreported) [2005] T.M.O.B. No. 182 (October 11, 2005) (T.M.O.B., per Tremblay) an opponent’s failure to rely on s. 12(1)(d) and s. 38(2)(b) when it probably meant to (and obviously should have) was fatal to that ground of opposition because the opponent had pleaded specific sections in support of other grounds of opposition. The case was distinguishable from Sun Squeeze, where the opponent had failed to plead any specific sections of the Act.
The applicant in Sun Squeeze, supra also raised other objections to the Statement of Opposition in its counterstatement, and also in written argument and at the oral hearing. No steps were taken by the opponent to rectify these complaints. The Hearing Officer noted that where an opponent makes no effort to amend the Statement of Opposition, to clarify its grounds, the Registrar ought to be reluctant to draw inferences when the facts are not clear. Similarly, in MKS Informatique Inc. v. MKS Inc. (unreported) [2002] T.M.O.B. No. 78 (May 23, 2002) (T.M.O.B., per Herzig) the Board stated “where the Opponent has notice of the applicant’s objections to pleadings, and the opponent does not act to correct serious deficiencies in its pleadings, the deficiencies will not subsequently be treated as inconsequential technical errors”. In this case, the Board found the first ground of opposition to be invalid as pleaded, and thus dismissed it.
This raises an interesting conundrum for applicants. What if the Statement of Opposition is improperly drafted, and this error might be useful in defeating the opposition? Ought an applicant hold this in reserve, for argument, or raise it at the very beginning, thereby permitting an opponent to rectify the situation?
In the writer’s view, deficiencies ought to be raised initially by letter filed either before the counterstatement is filed, or with the counterstatement, or by requesting an interlocutory ruling to strike all or any portion of the opponent’s pleading (see discussion above of Novopharm 2002 and the Practice Notice of November 8, 2006). In fact, this view is also reflected in the Board’s decision in Governor and Co. of Adventurers of England Trading into Hudson’s Bay v. Sears Canada Inc. (2002) 26 C.P.R. (4th) 457 (T.M.O.B., per Folz). The applicant argued that the following opposition ground was not sufficiently pleaded:
The trade-mark is not registrable in that contrary to s. 12(1)(b), it is clearly descriptive of the character or quality of the wares or services in association with which it is used or proposed to be used. 48
The applicant argued that this was insufficiently detailed to enable it to respond to the allegation, as there were no allegations of fact to support the bald repetition of the provisions of s. 12(1)(b). It was held that if the applicant had not raised the issue in its counter statement but had proceeded with evidence and argument, this might have shown that it understood the case to be met. Since the applicant had raised the issue of insufficient detail in its counter-statement and accompanying correspondence, it was up to the opponent to correct the deficiency. The opponent did not, and thus the Hearing Officer found that the ground could not be considered. Folz further indicated that if the ground had been sufficiently pleaded, it would have succeeded with respect to services.
It also seems that where an opponent improperly pleads, but an counterstatement is filed in response, the applicant will be presumed to have understood the issues. In such cases, the Opposition Board on its own is unlikely to reject any of the opposition grounds (see World Wrestling Federation Entertainment Inc. v. Danny Alex (2008), supra). Also, as discussed below, the Board has stated, when accepting technically deficient affidavits and exhibits, that part of its reasoning is that it is not willing to allow a party who raises no objection early in the proceedings to take advantage of the deficiencies at the later stages. If the opponent chooses not to amend its opposition, then the applicant can clearly raise these issues at a later date.
5) Amending the Statement of Opposition
As noted above, new facts may come to the attention of an opponent after the original Statement of Opposition is drafted that raise new grounds of opposition. In some cases, it may appear either that the wrong company was named as an opponent, or that an additional company should also be named. The applicant’s evidence may suggest a new ground not originally pleaded. The Regulations under the Act state that no amendment may be made to a Statement of Opposition without leave of the Registrar, and upon such terms as he deems appropriate (Rule 40). A Practice Notice, dated August 19, 1996 (replaced by a notice entitled "Procedure before the Trade-marks Opposition Board as of October 1, 2007") suggests that amendments are to be permitted when “it is in the interests of justice to do so having regard to all the surrounding circumstances including a) the stage the opposition proceeding has reached; b) why the amendment was not made or the evidence not filed earlier; c) the importance of the amendment or the evidence; and d) the prejudice which will be suffered by the other party”. In practice, the Opposition Board, in considering a request for an amendment of the Statement of Opposition, will ask the applicant for its comments, and will then, in the vast majority of cases, approve the amendment.
49
In Sun World International Inc. v. Parmalat Dairy & Bakery Inc. (2007) FC 641 (F.C. per Aronovitch, P.), Parmalat, which sells cheese in association with the mark BLACK DIAMOND, successfully opposed Sun World International's application for the same mark in association with plums. Sun World appealed the decision to the Federal Court.
Appearing first before the Prothonotary, Parmalat moved to amend its Statement of Opposition in order to add depreciation of goodwill (Section 22 of the Trade- marks Act) as a ground of opposition. The Prothonotary refused leave, finding that there is no authority for the notion that the Court can substitute its discretion for that of the Registrar with regard to amending the Statement of Opposition and thus it had no jurisdiction for the amendment. Further appeal to the Federal Court indicates that there may be circumstances under which the Court will grant leave to amend a Statement of Opposition on appeal. Harrington J. held (at (2007) FC 861) that the Registrar was unable to allow an amendment to the Statement of Opposition after a ruling, as the Registrar was then functus. The Federal Court is therefore unable to substitute its discretion in place of the Registrar pursuant to s. 56 of the Trade-marks Act. Federal Court Rule 75 also precluded granting leave to amend the Statement of Opposition, as doing so would reopen the hearing. The only permissive authority the Court cited was Federal Court Rule 399(2), which allows the Court to set aside or vary an order by reason of a matter that arose or was discovered subsequent to the making of the order. The Court declined to describe s. 22 ground of opposition as a matter “discovered” after the Registrar’s initial order. This reasoning was also applied in Simpson Strong-Tie Co. v. Peak Innovations Inc. (2008) F.C.J. No. 721 (May 1, 2008) (F.C. T.D. per Lemieux J.) where the unsuccessful opponent’s request to amend its opposition to add a new ground was refused, originally by the prothonotary and upheld on appeal. The Court found that “only in the rarest of circumstances necessary to render justice” would a new ground be permitted.
In Lendingtree v. Lending Tree, (2006), 48 C.P.R. (4th) 355 (F.C.T.D. per Dawson J.), aff'd (2007) 55 C.P.R. (4th) 385 (F.C.A. per Sexton J.A.) an opponent applied for judicial review in order to quash the Opposition's Board's decision to accept an amendment to the applicant's name. An affidavit had been filed in support of a request to amend the applicant’s name from Lending Tree Corp. to “Alex Haditaghi, trading as Lending Tree Corp.” on the basis that there was no legal entity known as Lending Tree Corp. and that Mr. Haditaghi had made an error in ignorance. The Federal Court held that judicial review is not appropriate because the opponent has the adequate alternative remedy of making argument before the Board as to the propriety of the amendment. 50
III Drafting the Evidence
The purpose of evidence in opposition proceedings is to prove the allegations raised in the Statement of Opposition by the opponent, and, conversely, for the applicant to rebut them.
It is therefore crucial to carefully prepare evidence, keeping in mind not only the formal requirements of such evidence, but also, case law on onus and burden of proof, and sufficiency of evidence on particular points. These factors will be 2 considered in this section.
1) Form and Content of Affidavits
Evidence filed by the parties in an opposition is submitted in either affidavit or statutory declaration form (Rules 41 to 43). In addition, the parties may file certified copies of registrations, or other portions of Trade-marks Office files, without any affidavit (s. 54). The requirement that such copies be certified is strictly enforced particularly where there is no other admissible evidence before the Opposition Board. For example, see The War Amputations of Canada v. Faber-Castell Canada (1992), 41 C.P.R. (3d) 557 (T.M.O.B., per Partington), where the file history of the opponent’s registered mark was not considered because it had not been certified. See also Gingras v. Hairabedian [2007] 63 C.P.R. (4th) 186 (T.M.O.B., per Carrière). However, in a 2006 decision, the Board revived an exception to the general requirement that registrations must be evidenced by certified copies in order for the opponent’s evidentiary burden to be met. In PepsiCo. Inc v. 100777 Canada Inc. (2006), 58 C.P.R. (4th) 71 (T.M.O.B., per Carrière), the Board held that where reference is made in a statement of oppositions to a trade-mark registration and that registration forms the basis of an allegation hat the applicant’s trade-mark is not registrable pursuant to section 12(1)(d), the Registrar, “having regard to the potential public interest in having such a ground of opposition raised, does consider it appropriate to exercise his discretion to check the register” (citing M&K Stereo Plus Ltd. V. Broadway Sound Plus Ltd. (1984), 3 C.P.R. (3d) 410 (T.M.O.B., per Trociuk).
2 For a thorough analysis of opposition evidence, see Scott, “Evidence in Trade-mark Cases”, 1968, 60 C.P.R. 28; Partington, “Evidence in Opposition Proceedings” (1985), 2 Canadian Intellectual Property Review 54; and Scott, “Evidence in Opposition Proceedings, 1991, a paper presented in Toronto, at an Insight seminar. See also the Practice Notice dated August 19, 1996 for comments on preparation of evidence. 51
The evidence should conform to the rules of evidence applicable in the Federal Court with respect to the filing of affidavits or statutory declarations. Not only is that standard required of evidence filed in the Trade-marks Office, but, since opposition evidence may be relied upon at an appeal to the Federal Court, the requirements of that Court should be met. Noteworthy, nonetheless, is that in accepting exhibits that were not properly notarized, the Board in Maximillian Fur Co., Inc v. Maximillian for Men’s Apparel Ltd. (1983), 82 C.P.R. (2d) 146 (T.M.O.B., per Partington) did state that “the Registrar does not strictly adhere to the rules of practice of the Federal Court”.
There is some inconsistency in the approach of the Opposition Board to raising technical arguments about the sufficiency of evidence. Questions regarding the proper notarization of documents, including both affidavits and attached exhibits, have been resolved both for and against the parties filing such evidence. As a general rule, failure to submit evidence via affidavit or statutory declaration will result in the unsworn or improperly notarized evidence being found inadmissible. For example, in Rogers Broadcasting Ltd. v. Chum Limited (1990), 34 C.P.R. (3d) 102 (T.M.O.B., per Partington), failure to swear an affidavit before a notary resulted in the opposing party’s affidavit being found inadmissible, and in both Hasbro, supra and Hebdo Science v. John Labatt Ltd (1989), 22 C.P.R. (3d) 378 (T.M.O.B., per Partington) unsworn submissions in letter form were readily found inadmissible. Further, in GD Express Worldwide v. Skyward Aviation (2000), 7 C.P.R. (4th) 348 (T.M.O.B., per Partington) the Opposition Board refused an affidavit, jointly signed by two affiants, when it was not clear whether the affiants had been administered an oath by the notary, and there was no evidence to indicate that the affidavit was validly made in the form prescribed by the law of the country where it was signed. In Sara Lee Global Finance LLC v. Abderahamane Magagi [2006] T.M.O.B. No. 106 (June 19, 2006) (T.M.O.B. per J. Carrière), the Hearing Officer, on his own, raised at the hearing stage that the opponent's affidavit was not signed by a person entitled to receive the affiant's oath. After hearing submissions from the parties on both whether the Registrar can raise such a deficiency and the consequences of the deficiency, the affidavit was disregarded. The same Hearing Officer also disregarded evidence of both parties in Gingras v. Hairabedian, supra, finding that neither party’s evidence was in the form of an affidavit or statutory declaration.
However, in Niagara Motive Supply Co. Ltd v. Fournier (1978), 46 C.P.R. (2d) 231 (T.M.O.B., per Metcalfe) where both parties failed to submit sworn affidavits, the Board admitted the evidence. And in Datascope of Canada Ltd. v. Datascope Corp. (1998), 81 C.P.R. (3d) 420 (F.C.T.D., per Dubé J.) the Trial Court agreed with the Board decision that three unsworn declarations filed by the applicant were acceptable, on the grounds that the declarants had been cross- examined by the opponent, had admitted under oath that the contents of the declarations were true, that the opponent seemed to accept the declarations as valid and had cross-examined the deponents. These facts “should prevent the opponent from contesting the validity of the declaration at a final stage in the 52 proceedings” (Datascope, supra at 424 quoting Board decision). The Court cited and agreed with the Supreme Court of Ontario decision in Saccon (Litigation Guardian of) v. Sisson (1992), 9 C.P.C. (3d) 383 (per Wright J.) which held that where an affiant is cross-examined under oath with respect to the content of an affidavit improperly executed, the evidence elicited on cross-examination was admissible.
With respect to unnotarized or incorrectly notarized exhibits, the Board’s position is inconsistent. In some cases, the Registrar is apparently not willing to allow an opposite party to take advantage of such a technical objection (Maximillian, supra and Time Inc. v. Moisescu (1990), 31 C.P.R. (3d) 255 (T.M.O.B., per Savard); however, see Salomon S.A. v. Tricot Exclusive Inc. (unreported) [2000] T.M.O.B. No. 51 (March 31, 2000) (T.M.O.B., per Herzig) (overturned on appeal for other reasons (2001), 14 C.P.R. (4th) 520 (F.C.T.D., per Rouleau J.)), where unnotarized exhibits were held inadmissible even though they apparently had been identified in the affidavit. In Beiersdorf v. Future International Diversified (2002), 23 C.P.R. (4th) 555 at 563 (T.M.O.B., per Partington), the Board held that exhibits that were objected to early on in the proceeding by the opponent were inadmissible because “the Registrar ought to apply a similar standard … as is applied by the Federal Court, at least in those instances where a party has been notified in a timely manner that the other party is objecting to the filing of unnotarized exhibits”. Also, in Boyer Candy Co. v. Hershey Canada Inc. (2001), 21 C.P.R. (4th) 257 (T.M.O.B., per Folz), the Hearing Officer held that the affidavits were inadmissible since they were signed in one location and commissioned at another. Since they were not properly sworn before a Commissioner of Oaths, they were not properly executed. However, each of the deponents were cross-examined and the Hearing Officer held that the information given at the cross-examination, which was given under oath, was admissible.
In addition to the requirements for technical sufficiency, affidavit evidence must meet substantive requirements. To be given weight, such evidence must be more than a statement that the attached exhibits support the application. In Intuit Inc. v. Brandolini (unreported) [2002] T.M.O.B. No. 114 (October 15, 2002) (T.M.O.B., per Folz) the Board pronounced that exhibits must elaborate or particularize evidence given in the affidavit in order to be acceptable.
All evidence intended to be relied upon in the opposition should be filed as part of the opposition proceeding. In Southam Business and Communications Group Inc. v. Medical Publications Inc. (1991), 40 C.P.R. (3d) 247 (T.M.O.B., per Partington), the Hearing Officer stated that evidence filed in support of a Section 12(2) claim during prosecution must be served and filed in the opposition if the applicant intends to rely upon it. Presumably, the same would apply to evidence filed pursuant to Section 14. If challenged, an applicant must still prove the distinctiveness of its trade-mark.
53
In addition to evidence-in-chief, an opponent may file evidence in reply, and any person who swears an affidavit filed in an opposition proceeding may be cross- examined.
The content of affidavits will depend upon the particular grounds of opposition relied upon. For example, any affidavit alleging confusion with a registered trade-mark must include proof of the registered trade-mark, by certified copy or other suitable evidence showing the ownership and status of the registration, as well as the factors which address the issue of confusion as set out in Section 6(5) of the Act. However, it is not enough to mechanically go through those provisions, and gather facts on the length of use, or the details of the wares or services. In preparing evidence, the opponent or agent should be considering how the evidence will be used to prove or disprove the points intended to be argued in the opposition. In addition, the party preparing the evidence must be aware of common evidentiary problems of opposition evidence, namely who has the burden or onus of proof, the evidentiary burden on each party in the opposition, hearsay and relevant dates. Furthermore, the way in which certain information must be proved, such as the state of the Register and public awareness, should be considered.
The applicant’s evidence must be free from ambiguity, since it is clear that any ambiguity will prejudice the evidence filed. In addition, the evidence must be persuasive, and not lead to any doubt on the relevant issues. Time and time again in Opposition Board decisions, one reads that there was doubt as to an issue in the opposition, which must be resolved against an applicant. However, see below, on the relevant onus on an applicant – the onus is not to show, beyond reasonable “doubt”, that a mark is confusing, registrable, or distinctive, but instead to show that the trade-mark should be acceptable “on a balance of probabilities”. Applicants should also be aware that the opponent’s evidential burden can be met by reference not only to the opponent’s evidence but also to the applicant’s own evidence (see Labatt Brewing Company Limited v. Molson Breweries, a Partnership (1996), 68 C.P.R. (3d) 216 (F.C.T.D., per Heald J.)
A serious problem for participants in opposition proceedings is the absence of a forum for dealing with objections to evidence filed, or the failure to respond to questions on cross-examinations, except in written submissions or in a hearing after the completion of the evidence. No procedure exists for interlocutory determination of these issues. Since a serious deficiency may render the evidence inadmissible, and given the highly litigious nature of these proceedings, it would be much better if these issues could be dealt with promptly, and determined during the proceedings, rather than waiting until the argument stage. However, the Board has held that it is inappropriate for a party to raise a technical issue for the first time at an oral hearing, where the other party has no opportunity to seek to correct what might arguably be a technical deficiency in its evidence (see R & A Bailey & Co. v. Gestion A.D.L. (2003), 29 C.P.R. (4th) 391 (T.M.O.B., per Partington)). 54
2) Time Limits
Under the Rules in place prior to October 1, 2007 (some of which continue to apply to applications advertised before then), an opponent had one month to file its evidence, following receipt of the applicant’s counterstatement (Rule 41) and an applicant similarly had one month within which to do the same, following filing of the opponent’s evidence (Rule 42). For applications advertised on October 1, 2007 and later, this has been amended to four months for both the opponent and applicant’s evidence. For applications advertised before October 1, 2007, the old deadlines continue to apply. The amended deadlines reflect the fact that it takes a lot of time to properly prepare evidence. The Trade-marks Office has, in a Practice Notice dated October 1, 2007, set guidelines on the standard extensions of time, beyond the regulatory terms, that will be permitted. Generally, each party may request and will be granted a further two-month extension of time to file evidence-in-chief with consent from the other party, or six months in view of ongoing settlement negotiations and with the other party’s consent.
The new Practice Notice provides the following guidelines with respect to the granting of extensions in an opposition proceeding, beyond the terms already set out in the Trade-marks Act or Regulations (as amended), for a trade-mark application advertised in the Trade-marks Journal on or after October 1, 2007:
Filing a statement of opposition : 3 months with sufficient reason(s) + 2 months with sufficient reason(s) and the other party's consent or if exceptional circumstances are shown
Filing a counter statement : 2 months with sufficient reason(s).
Filing evidence pursuant to Rule 41(1) or Rule 42(1) of the Regulations: 2 months with sufficient reason(s) and the other party's consent or if exceptional circumstances are shown; or + 6 months in view of ongoing settlement negotiations and with the other party's consent.
Filing evidence pursuant to Rule 43 of the Regulations: 4 months with sufficient reason(s) + 2 months with sufficient reason(s) and the other party's consent or if exceptional circumstances are shown
Cross-examination order: 4 months with sufficient reason(s) and the other party's consent or if exceptional circumstances are shown
Filing a written argument : 4 months with sufficient reason(s) + 4 months with sufficient reason(s) and the other party's consent or if exceptional circumstances are shown
Requesting an oral hearing: No request for an extension of the one month delay provided by Rule 46(4) of the Regulations will likely be considered. 55
Guidelines for trade-mark applications advertised in the Journal before October 1, 2007 are also provided and should be reviewed carefully.
Under these guidelines, no request for an extension of time pursuant to s.47(1) of the Trade-marks Act (and presumably Rule 44(1) of the Regulations) will be granted unless a sufficient reason is given to explain why additional time is needed.
According to previous case law and practice, in considering whether to grant leave to permit the filing of new evidence, the Board will consider all surrounding circumstances, including a) the stage of the opposition proceedings; b) the prejudice to the other side; and c) the reasons for failing to have the evidence available for filing in a timely fashion (e.g. See Associated Independent Family Funeral Homes Ltd. v. Service Corp. International (Canada) Ltd. (2002), 24 C.P.R. (4th) 268 (T.M.O.B., per Bradbury), where an attempt by the opponent to file new evidence five days before the hearing was refused (the decision being rendered as part of the opposition decision on the merits).
The Registrar may also grant retroactive extensions of time pursuant to s.47(2) of the Trade-marks Act if “the prescribed fee is paid and the Registrar is satisfied that the failure to do the act or apply for the extension of time with that time or the extended time was not reasonably avoidable”. These extensions may be granted after the passing of the statutory deadline, or after an extension granted under s. 47(1) or, possibly, even after the deemed withdrawal of an opposition or deemed abandonment of an application. A recent s. 45 decision addressed this jurisdiction of the Registrar:
In my opinion it is consistent with the words and spirit of the Act for the Registrar to permit the registrant to file out of statutory delays supplementary evidence so long as the conditions set out in s.47(2) are met and so long as the Registrar has not rendered his final decision. (Bereskin & Parr v. Cie de Literie Provinciale Limitée (2005), 48 C.P.R. (4th) 298) (per Savard, TMSHO).
In that case, Registrar granted a retroactive extension of time to the registrant to file additional evidence and allowed the requesting party to file supplementary written arguments. The Hearing Officer stated that such extensions of time form a safeguard against unwarranted attempts to have registrations expunged and that any potential prejudice to the requesting party was addressed by the requesting party’s opportunity to file supplementary written arguments. Finally, even when an extension of time is not permitted, a request for leave to file evidence may be made pursuant to rule 46 of the Trade-marks Regulations.
The Opposition Board has in recent years begun granting retroactive extensions after the deemed abandonment of an application. In Bensusan Restaurant Corp. 56 v. Blue Note Restaurant Inc. (2000), 10 C.P.R. (4th) 550 (TMOB, per J.W. Bradbury) the applicant failed to file its evidence before its deadline and, then, two months after the deadline (but before the notice of deemed abandonment was issued) the applicant applied for a retroactive extension of time. The Opposition Board upheld that grant of the extension as within the Registrar’s jurisdiction for two primary reasons. First, the Supreme Court of Canada has stated that the application of the doctrine of functus officio to administrative tribunals should be flexible and “[a]ccordingly, the principle should not be strictly applied where there are indications in the enabling statute that a decision can be reopened in order to enable the tribunal to discharge the function committed to it by enabling legislation (Chandler v. Alberta Assn. of Architects [1989] 2 S.C.R. 848). Second, s. 47 “gives the Registrar an unfettered discretion to grant an extension of time, including a retroactive extension of time, when he deems it appropriate to do so” and thus a “a strong argument can be made that the Registrar can reopen the opposition process after there has been a deemed abandonment or withdrawal under s. 38.”
The Opposition Board in Bensusan cited with approval an earlier decision of the Registrar that provided an additional rationale for such retroactive extensions of time): Canada Post Corp. v. H & K Horizons Inc. (1997), 84 CPR (3d) 232 (TMHO). In that case, the notice of deemed abandonment had not yet been sent to the applicant at the time the applicant requested a retroactive extension of time. The request was granted, the Hearing Officer noting that “the opposition process is designed to be user friendly and to ensure that both parties are given a reasonable opportunity to present their case to the board. This is not achieved by arbitrarily terminating the application because a deadline is missed, if there was good reason for the failure to meet the deadline and the applicant expresses a timely desire to continue the process.” The Opposition Board most recently asserted this jurisdiction to grant retroactive extensions of time after a deemed abandonment in Intel Corp. v. Emeny [2005] T.M.O.B. No. 203 (per J.W. Bradbury). In all these deemed abandonment cases, the retroactive extension was granted before a notice of deemed abandonment was sent. However, the writer is personally familiar with a file in which a so-called retroactive extension of time was granted to an applicant to file its counterstatement after a notice of deemed abandonment.
In Kraft Foods v. Weetabix of Canada (2006), 50 C.P.R. (4th) 189 (T.M.O.B. per Martin), the Board permitted the applicant to make additional submissions in writing where the opponent had only submitted their list of cases one day prior to the oral hearing.
A lack of response by the Registrar does not constitute a decision for a Court to review on appeal. In Sadhu Singh Hamdard Trust v. Canada (Registrar of Trade-marks) and Ajit Newspaper Advertising, Marketing and Communications, Inc. (2006), 47 C.P.R. (4th) 373 (F.C. per von Finckenstein J.), affirmed [2007] 62 C.P.R. (4th) 245 (F.C.A. per Pelletier), the Applicant requested an extension of 57 time to its statement of opposition in a timely fashion, but its correspondence was apparently misplaced, and the Trade-marks Office allowed, and then registered the trade-mark. The Court held that the Registrar is not compelled under the Trade-marks Act to grant an extension, which is discretionary. The Court also commented on the Office practice regarding extensions of time, which was held not to have binding effect, and also noted the prospective opponent's failure to properly address the letter requesting the extension of time. On appeal, the Court further noted that there was an opportunity under s. 39(3) of the Act to extend the time for filing a statement of opposition (although that remedy only applies to applications that have been allowed and not, as in this case, registered). Since there was no decision to review, the Applicant's only option to challenge the trade-mark was by way of expungement proceedings. The Court noted that the Applicant could have checked with the Registrar or indeed have filed the notice of opposition when it had not received a response from the Registrar.
3) Onus of Proof and Evidentiary Burden
A simple statement of the principles on onus and burden in opposition proceedings might be put this way: an opponent must raise enough evidence pertaining to any of the grounds of opposition upon which it relies to make it plain that facts exist that justify the ground of opposition. Once that is done, the onus moves to the applicant to prove that the particular ground of opposition should not prevent registration of its trade-mark (for example, Joseph Seagram & Sons Ltd. v. Seagram Real Estate Ltd. (1984), 3 C.P.R. (3d) 325 at 329-330 (T.M.O.B., per Troicuk) aff’d (1990), 33 C.P.R. (3d) 454 (F.C.T.D., per MacKay J.) and John Labatt Ltd. v. Molson Companies Ltd. 1990, supra. Time and time again, opposition decisions refer to the failure of the opponent to discharge an evidentiary burden, and of the applicant to meet its onus.
In every case, therefore, an opponent must consider what evidence is necessary to prove each ground. Confusion is the most common issue in opposition proceedings, whether it relates to confusion with a registered trade-mark, or confusion with a previously used or made known trade-mark or trade name. The evidentiary onus on the opponent is therefore first to prove the existence of a registration, or prior use of a trade-mark or trade name, and also, suitable factors from which a determination of confusion can be made. In addition, Section 17 requires an opponent relying upon prior use of a trade-mark or trade name to show that it has not abandoned its trade-mark. Accordingly, evidence to meet this obligation must be filed, in addition to evidence of earlier use or making known.
In some cases, the proof of the pertinent facts is obviously far easier to show for an applicant than an opponent, for example, where an opponent relies on non- compliance with Section 30(b), to argue that the applicant has not used the 58 trade-mark since the date first alleged, or in fact not at all. The Opposition Board has noted that for some grounds, the evidentiary burden on the opponent will be lower, especially if the relevant facts are more readily available to the applicant (Tune Masters v. Mr. P’s Mastertune Ignition Services Ltd. (1986), 10 C.P.R. (3d) 84 (T.M.O.B., per Martin) and United States Shoe Corp. v. Premiere Vision Inc. (1990), 33 C.P.R. (3d) 353 (T.M.O.B., per Partington)).
If an opponent chooses to rely upon prior use (s.16) as its ground of opposition, it must be in a position to show that it (or a licensee or predecessor) actually has prior use. Such use must conform with the requirements of Section 4, failing which its claim to prior use may not succeed. In Mutual Investco Inc. v. Knowledge is Power Inc. (2001), 14 C.P.R. (4th) 117 (T.M.O.B., per Partington), the opponent relied on prior use of its trade-mark on brochures which the evidence showed were distributed free of charge. The Hearing Officer quoted from the Federal Court decision of Professional Gardener Co. v. Registrar of Trade-marks (1985), 5 C.P.R. (3d) 568 (F.C.T.D., per Strayer J.) that the term “trade” in Section 4 requires some payment or exchange, and also noted that there had to be a distribution to the public. Without evidence of such distribution, there was no prior use. (In contrast see Now Communications Inc. v. Chum Ltd. (2000), 5 C.P.R. (4th) 275 (T.M.O.B., per Partington) for a case where free distribution was use). In Discrete Distribution v. International Clothiers [2006] T.M.O.B. No. 178 (November 16, 2006) (T.M.O.B. per Bradbury), it was held that a certified copy of a trade-mark application does not constitute evidence of use, since applications are not part of the register pursuant to s.2 and s. 26(1)(a) of the Trade-marks Act, and s.54(2) of the Act, which permits certified copies of as evidence of the facts set out therein, only applies to the register. Furthermore, it was noted that even if a certified copy were to be considered evidence of the date of first use, at most it would be considered de minimus use, insufficient to support an entitlement according to Entre Computer Centers, Inc. v. Global Upholster Co. (1991), 40 C.P.R. (3d) 427 (T.M.O.B. per Martin)
Regardless of the ground of opposition, the first task for an opponent will be to assess what the opposition is really about, and what evidence is relevant to those grounds. Similarly, for an applicant, the task is to take the opponent’s evidence, and decide how best to meet those facts to prove the registrability of the application. Once the opponent has met the evidentiary burden, the applicant has the onus of proving that, for example, there is no reasonable likelihood of confusion, or that it did in fact use its trade-mark from the date first alleged, or that its wares are stated in ordinary commercial terms.
Failure of a party to participate can lead to an inference that an onus has not been met. Normally an applicant would have to file evidence and/or argument to overcome its onus in an opposition, but the Board has noted that there is no obligation on an applicant to file evidence. It has held that submissions in a counterstatement (especially if detailed), or in written and/or oral argument may suffice. Furthermore, the onus on an applicant may be “far less severe” where 59 there is a substantial dissimilarity between the marks and/or wares or services (G.H. Mumm & Cie, Societe Vinicole de Champagne, S.A. v. F.G. Bradley Co. Ltd. (1983), 80 C.P.R. (2d) 176 (T.M.O.B., per Partington).
If an opponent relies upon confusion with a registered trade-mark, the Opposition Board will occasionally assess the issues of confusion based on that registration, without any other evidence having been filed. The Opposition Board has indicated in such cases that it will confirm the existence of the registration, then consider the surrounding circumstances, including those listed at s. 6(5) of the Act, to decide whether the Applicant had satisfied the legal burden on it to establish, on a balance of probabilities, that there would not be a likelihood of confusion between the trade-marks (Desjardins Sécurité Financière, Co. d'assurance-vie v. Tokyo Marine & Fire Insurance Co. supra). However, absent other evidence, this will only establish a de minimis use of the trade-mark. Red Carpet Foods Systems Inc. v. Furgale (unreported) [2003] T.M.O.B. No. 52 (June 25, 2003) (T.M.O.B., per Bradbury). This will not be sufficient to discharge a ground of opposition based on non-entitlement or non-distinctiveness (Rooxs, Inc. v. Edit-SRL (2002), 23 C.P.R. (4th) 265 (T.M.O.B., per Bradbury)).
Recently, the courts have confirmed that the standard of proof to be met in opposition proceedings is the civil standard. In Dion Neckwear, supra, the Court overturned the decision of the Registrar to refuse an application. The words used in the Registrar’s decision, a variation of which have been used in dozens of decisions over the years, were “I am still left in doubt as to whether there would be a reasonable likelihood of confusion…”. The Court held that such wording suggested that the applicant must show “beyond doubt” that no likelihood of confusion existed or would exist if the applicant’s mark was registered. Décary J.A. held that the Registrar erred in applying a burden more onerous than that applicable in civil proceedings. The Registrar had to be satisfied only on a balance of probabilities. Décary J.A. further commented, (at p. 162) that although there is considerable authority for the proposition that doubt should be resolved in favour of the opponent:
…that proposition, starting with Lord Watson in Eno, has always been couched in general terms, as a corollary to the principle that the onus was on the applicant; no one, to my knowledge, has suggested that the standard applicable in civil proceedings was not to apply or that an applicant had to demonstrate beyond doubt that confusion was unlikely.
4) Agreements and Other Proceedings
The following cases are noteworthy with respect to the issue of employing previous court or Board findings in an opposition proceeding. In both Enterprise Car & Truck Rentals Ltd. 1998, supra and Enterprise Car & Truck Rentals Ltd. v. 60
Enterprise Rent-A-Car Co. (unreported) [2000] T.M.O.B. No. 52 (March 31, 2000) (T.M.O.B., per Partington), the Board held that notwithstanding the wording of Section 16(4), and in accordance with the reasoning of the Federal Trial Court in Molson Breweries v. Labatt Brewing Co. (1996), 68 C.P.R. (3d) 202 (per Heald J.), an opposition based on a previously filed application cannot be sustained when the applicant has obtained a prior order of the Federal Court permanently enjoining the opponent from using the mark on which its opposition is based. In Molson Breweries, A Partnership v. Oland Breweries Ltd. (1999), 1 C.P.R. (4th) 239 (T.M.O.B., per Martin) (rev’d in Labatt Brewing Co. v. Molson Canada (2003), 24 C.P.R. (4th) 496 (F.C.T.D., per MacKay J.)), which concerned an application for OLAND EXPORT, the Board found that the opponent had satisfied its initial evidentiary burden with respect to non-distinctiveness grounds by reliance on the Federal Court’s finding of fact in Molson Breweries, A Partnership v. John Labatt Ltd. (1998), 82 C.P.R. (3d) 1 (F.C.T.D., per Tremblay- Lamer J.) [rev’d (2000) 5 C.P.R. (4th) 180 (F.C.A., per Rothstein J.)] that the opponent’s mark EXPORT was sufficiently distinctive pursuant to Section 12(2). Additional evidence supporting the conclusion that the applicant’s mark was distinctive as of the relevant date was accepted. As the Board held the finding to be in rem, the fact that the evidence of that case was not of record in the present case was held to be irrelevant. In Disney Enterprises Inc, formerly Walt Disney Co. v. Fantasyland Holdings Inc. et al. (2000), 4 C.P.R. (4th) 370 (F.C.A., per Malone J.A.), the applicant sought to register a mark which the Court of Queen’s Bench of Alberta had found confusing with the opponent’s mark in a previous passing off action. The Court held that assuming, without deciding, that res judicata and issue estoppel may apply in trade-mark opposition hearings where the basis of the opposition is confusion, the trial judge was correct to hold that the question before the Board was not the same as that which was before the Queen’s Bench, since the goods and services in the passing off action were sufficiently different from those at issue in the opposition. Where the question before the Board is the same, and the “fact situation entirely analogous” the Board will follow “the principle of stare decisis, or alternatively the principle of comity of decision making” (CMA v. Physician’s Choice, supra). In that case, the Hearing Officer followed the reasoning in an opposition to “Doctor’s Choice” in deciding an opposition to “Physician’s Choice”.
Where a proceeding for a trade-mark infringement action is ongoing, an applicant, vis à vis the same opponent in an opposition proceeding, cannot assert that the use the opponent relies on is unlawful since it forms the basis of an infringement proceeding. Hence, in the absence of a court decision the opponent can rely on its use to show confusion (Mister Coffee & Services Inc. v. Mr. Coffee, Inc (2002), 23 C.P.R. (4th) 544 (T.M.O.B., per Bradbury). Only where there is clear evidence that the opponent’s use is unlawful, can the Registrar exert his jurisdiction and find the use of a trade-mark to be unlawful in an opposition proceeding.
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On a somewhat related note, an applicant in an opposition can not allege that the opponent’s trade-mark registration is invalid. This is clearly set out in a number of cases, including Bacardi & Company Limited v. Havana Club Holdings S.A. (2001), 14 C.P.R. (4th) 231 (T.M.O.B., per Herzig), aff'd (2003), 32 C.P.R. (4th) 366 (F.C.T.D. per Martineau J.) and Sunshine Biscuits, Inc. v. Corporate Foods Ltd. (1982), 61 C.P.R. (2d) 53 (F.C.T.D., per Cattanach J.)).
With respect to agreements between applicants and opponents, in Valint N.V., supra, the applicant argued that as it and the opponent had entered into a co- existence agreement whereby they agreed, inter alia, not to interfere with each other’s respective applications in association with certain wares and services, the opponent was estopped from opposing the applications. The Court held that the agreement was of no effect, noting that no authority was produced supporting the proposition that equitable remedies are available for use in either opposition proceedings or in appeals such as this, and that a civil suit was the appropriate avenue for the applicant as the Act does not provide a forum in which to compel the enforcement of such terms. Another case, an unopposed appeal to the Federal Court, considered additional evidence filed on appeal, namely a co- existence agreement between Dell Computer Corporation and Latitude Communications Inc. acknowledging that there has been no confusion between Dell’s LATITUDE computer wares with the opponent’s LATITUDE custom office furniture wares. The Court allowed the appeal against the refusal of the trade- mark (Dell Computer v. Latitude Communications (unreported) [2003] F.C.J. No. 797 (F.C.T.D., per Simpson J.)), in effect holding that the agreement was admissible to support a finding that the marks were not confusing.
5) Hearsay and Other Evidentiary Defects
The admissibility of evidence is frequently dealt with by the Opposition Board. Inadmissible evidence can fall into numerous categories. The 1968 Scott article, referred to above, contains a description of some of the problems raised in evidence filed by parties to an opposition, which, this writer submits, continue to occur today:
While it is true that from time to time we all take a stand on the admissibility of evidence tendered by our adversary, many of us are engaged in a process of filing any and everything that might conceivably have its effect in bolstering our client’s position and perhaps in some cases, filing the sort of material that Lord Justice Rigby referred to in the J.L. Young Mfg. Co. case, namely material designed to act as an effective persuader whatever its admissibility might be. A very brief examination of current opposition files has disclosed a repetition of the tendering of clearly inadmissible evidence of which examples are; inadmissible opinion evidence as to the likelihood of confusion; allegations that words are common to 62
the trade without admissible evidence in support of such allegations; argumentative material in affidavits; inadmissible evidence regarding proceedings in foreign jurisdictions; evidence purportedly in reply not confined even remotely to matters in reply, and ill-founded inadmissible evidence of surveys and trap orders.
One of the most frequent problems is hearsay. Gary Partington (formerly head of the Opposition Board), in his paper on opposition evidence, supra states:
A significant proportion of the objections to the admissibility of evidence in opposition proceedings are based on the evidence being either hearsay or inadmissible opinion evidence. Thus, portions of affidavits or statutory declarations containing statements made on information and belief, statements of opinion, matters of hearsay, and argumentative matters are in general inadmissible to the extent that they are not confined to facts which the affiant or declarant is able of his own knowledge to prove. Further, where an affidavit is such that the Registrar or the Court is unable to separate the admissible from the inadmissible hearsay and opinion portions of the affidavit, the affidavit will be excluded in its entirety.
With respect to hearsay evidence, the position of the Registrar is that affidavits or statutory declarations should be confined to such facts as affiants or declarants are able of their own knowledge to prove. Thus, and subject to the exceptions to the hearsay rule, documents which are annexed to affidavits will be inadmissible as hearsay evidence if the party seeks to rely upon statements made therein which are not within the personal knowledge of the affiant. On the other hand, such documentary evidence will be admissible to establish the existence of the document as opposed to the truth of its contents.
Hearsay issues must be carefully considered when selecting the affiant, and in drafting the affidavit. Key information in the opposition may include:
- the length of time a trade-mark has been used;
- sales figures;
- advertising expenses;
- circulation data for publications in which the applicant or opponent have advertised;
- viewership for television or radio programs on which the parties may have advertised; and 63
- information on channels of trade.
All of these can easily lead to hearsay issues. It is seldom that one person in a company will have all the information, based on personal knowledge. Many affiants may be required to properly file the necessary information.
However, in the ground-breaking decisions of R. v. Khan, [1990] 2 S.C.R. 531 (per McLachlin J.) and R. v. Smith, [1992] 2 S.C.R. 915 (per Lamer C.J.), the Supreme Court of Canada adopted a principled approach to the admission of hearsay. Hearsay evidence is admissible so long as it is reliable and necessary. The reference to “necessary” is important. If there is a reasonable way to have direct “personal knowledge” affidavits, parties should do so. The Opposition Board will reject evidence on hearsay grounds where it is not clear that there were acceptable reasons that a person with direct knowledge could have provided the evidence.
Necessity and reliability were found with respect to an affiant’s reporting the finding of confusion by various marketing field representatives throughout Canada, on the basis that the affiant was personally involved in instructing his personnel on the type of information sought and that it appeared “onerous to expect a single individual to gather information from geographically dispersed locations” (Petro Canada v. UPI Inc. (formerly UCO Petroleum Inc.) (2000), 6 C.P.R. (4th) 401 (T.M.O.B., per Herzig)).
Media measurement data collected by a third party (which one would have thought is reliable if that entities role is specifically to measure media figures) was recently given no weight since it was presented in a company affidavit. There were no reasons given why the evidence could not have been given by a person with direct knowledge (Black Entertainment Television, Inc. v. CTV Ltd. (2008), supra. It has also been held that the fact that an employee was living outside of Canada was not enough to show that hearsay evidence regarding that employee’s knowledge was necessary (Budget Rent a Car International Inc. v. Discount Car and Truck Rentals Ltd. (1996), 70 C.P.R (3d) 411 (T.M.O.B., per Vandenakker)).
In Tradition Fine Foods Ltd. v. Group Tradition'l Inc. 2006 FC 858 (F.C. per Blanchard J.), the Applicant attempted to introduce evidence on appeal in the form of a transcript of testimony from an unrelated proceeding. The Applicant argued that the transcript contained an admission that the word TRADITION'L was clearly descriptive of the traditional baking style employed to make the associated wares. The Court, however, ruled that the evidence was inadmissible hearsay that did not meet any hearsay exceptions. In Continental Tire Canada, Inc v. Compagnie Générale des Établissements Michelin-Michelin et Cie. [2007] T.M.O.B. No. 15 (January 12, 2007) (T.M.O.B. per J. Carrière) the Hearing Officer disallowed an affidavit from a prior proceeding after considering a number 64 of factors, including: (i) whether the parties to the current proceeding were the same as in the previous proceeding (ii) whether or not the trade-mark applied for was the same in both proceedings (iii) the availability of the affiant for cross- examination and (iv) whether or not all, or most of the issues in the two proceedings are the same.
This issue of who can offer evidence has been considered recently with respect to employees of agent law firms. In Cross-Canada Auto Body Supply (Windsor) Ltd. v. Hyundai Auto Canada (2006) FCA 133 (April 3, 2006) (F.C.A. per Sexton J.A.) (see also Campbell Soup. Co. v. Fancy Pokket Corp. (2006) 56 C.P.R. (4th) 359 (T.M.O.B. per J. Carrière), the Respondents had brought a successful motion to remove the Appellant's solicitors as Solicitors of Record or alternatively, to retain new counsel to prepare written submissions and oral argument. The motion was based on the fact that the Appellants had prepared an application for expungement based on evidence collected by employees of the solicitor firm, namely, law clerks and students. The motion was granted and the Appellants appealed to the Federal Court of Appeal. The Court dismissed the appeal, noting:
In most cases such investigation and opinions can be conducted by objective non-employees. The lawyer who relies on members or employees of the firm to provide such evidence runs a risk that lesser weight may be given to such evidence. A client should not be subjected to this risk unless it is clearly necessary.
In a 2007 decision, the Opposition Board rejected an affidavit from a lawyer in the firm acting for the applicant that addressed regulatory requirements for the beverages in question and reviewed descriptions of the opponent’s products taken from its own website. The point was to show the products were different. The affidavit was rejected since the nature of the wares was evidence on the contested issue (confusion). G.I. Energy Drinks Corp. v. Anstalt (2007) T.M.O.B. No. 94 (June 13, 2007) (T.M.O.B. per Carrière). A similar decision giving no weight to an affidavit from an employee of the opponent’s agent attaching pages of the opponent’s website is found in Kocsis Transport Ltd. v. “K” Line America, Inc. (2008) T.M.O.B. No. 37 (February 4, 2008) (T.M.O.B. per Tremblay).
Most oppositions are based on the likelihood of confusion. Since few cases involve concrete examples of confusion, the parties frequently wish to provide opinions on whether confusion has occurred or is likely to occur. Scott, in his 1968 article supra, refers, at page 46, to the fact that it is rare for affidavits from the parties not to conclude with a paragraph making some assertion of the public’s state of mind. For example, the following, or a version close to it, appears in at least one affidavit filed in most opposition proceedings:
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Based on my experience, I believe (or do not believe) that the public seeing the trade-mark would (or would not) associate it with my company’s products.
Likelihood of confusion is, of course, the very issue which the Court, or Opposition Board, must decide. On the other hand, evidence from witnesses that they are or have been confused is not only admissible, but naturally highly relevant.
Experts may offer an opinion on the key issues but, of course, the qualifications of such experts must be first established. Also, the expert should be independent from the parties. A witness cannot, for example, be both the main company witness for an applicant or opponent, and also an alleged expert on the industry. See comments in Black Entertainment Television, Inc. v. CTV Ltd. (2008), supra.
Public opinion polls, or surveys, which attempt to assess the state of mind of large numbers of people are obviously fraught with hearsay and other evidentiary problems. Frequently, the person swearing the survey affidavit will have no personal knowledge of the answers given by any of the respondents, and is merely giving opinions of others who are not before the tribunal. Nevertheless, the filing of survey evidence is common, not just in the courts, but in opposition proceedings. The key to successful reliance on such surveys is to carefully establish the methods and standards under which the survey was conducted and the results analyzed. The case of Canadian Schenley Distilleries Ltd. v. Canada’s Manitoba Distillery Ltd. (1975), 25 C.P.R. (2d) 1 (F.C.T.D., per Cattanach J.) makes the following comments on survey evidence:
In my view the admissibility of survey evidence and the probative value of that evidence when admitted is dependent on how the poll was conducted, the questions asked, how they were asked and how they were framed and what purpose the evidence is to be used for. There would be no objection to evidence being admissible when the poll is put forward not to prove the truth of the statements it contains but merely to show the basis of an expert’s opinion, or as in the present instance, an assessment of the results of the survey.
(See also Joseph Seagram & Sons, supra).
It is therefore very important to establish:
(i) the credentials of the person conducting the survey, who should be an expert in surveys;
(ii) information on the design of the survey; 66
(iii) an explanation of the sample size and how the sample can be extrapolated to the public at large;
(iv) a statement from the person swearing the affidavit that he or she actually monitored some of the survey interviews;
(v) a fair and impartial analysis of the survey results; and
(vi) the conclusion from those results, by someone knowledgeable in survey techniques with personal knowledge of some of the answers, as well as knowledge on how the survey was conducted.
(For example, see Seligco Food Corporation v. Becker Milk Co. Ltd. (1989), 3 C.P.R. (3d) 506 (T.M.O.B., per Martin); Boyle-Midway (Canada) Ltd. v. Farkas Arpad Homonnay (1976), 27 C.P.R. (2d) 178 (T.M.O.B., per Carson); and Carling Breweries Ltd. v. Molson Companies Ltd. (1984), 1 C.P.R. (3d) 191 (F.C.T.D., per Strayer J.), aff’d (1988), 19 C.P.R. (3d) 129 (F.C.A., per Hugessen J.)).
For the survey to meet these criteria, it must be conducted by a qualified professional and designed by someone properly recognizable as a survey expert. Needless to say, this can be very expensive, and the parties in an opposition need to critically analyze whether other evidence is available, or whether the survey will provide essential information. It is far more likely for a survey to be disregarded, in whole or in part, or given very little weight, than it is for the survey to be the critical piece of evidence in the opposition.
For example, survey evidence provided in Molson Breweries, a Partnership v. John Labatt Ltd. 1998, supra that was to show that EXPORT had acquired distinctiveness in Ontario and Québec was given very little weight because the affiant, who had designed the survey, did not witness the surveys being conducted, was not at all involved in the survey’s completion and could give no direct evidence as to the manner by which the questionnaires were completed; the survey was conducted only in certain locations in Ontario, and thus could not indicate distinctiveness throughout Ontario and Québec; and various methodology flaws existed, such as the lack of control questions, the poor quality of “word association” surveys in general, and the phrasing of questions so as to elicit certain responses. And in London Life Insurance Co. v. Manufacturers Life Insurance Co. et al. (1999), 87 C.P.R. (3d) 229 (F.C.T.D., per Reed J.), the survey evidence was accorded less weight because it did not try to replicate the real life situation in which a consumer would encounter the mark or the manner in which it is normally used in the industry. Faced with a similar problem, Rouleau J. found cause to say in Mattel, Inc. v. 3894207 Canada Inc. et al. (2004), 30 C.P.R. (4th) 456 at 464 (F.C.) aff’d (2005), 38 C.P.R. (4th) 214 (F.C.A., per Noël J.A.), aff’d 2006 SCC 22 (S.C.C., per Binnie J.):
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It is therefore fundamental to understand that such surveys, to have probative value, cannot take place in a vacuum, as was the case here. It is not sufficient to ask abstract questions without revealing the concrete context underlying the issues. Furthermore, many questions included in the survey are suggestive. As Rooke J. pointed out in Walt Disney Productions, supra, the question “should not direct the person answering the question into a field of speculation upon which that person would never have embarked had the question not been put”.
A party filing survey evidence must also be attentive to which section of the Trade-marks Act its opposition is based upon. For instance, while a survey trying to establish confusion should create the real life situation in which the consumer would encounter the mark, an opposition trying to prove that an advertised mark is clearly descriptive or deceptively misdescriptive must focus only on the trade- mark per se - not how the trade-mark appears on the particular label or package. Indeed, in Dairy Farmers of Canada v. Hunt Wesson supra the survey evidence was considered “flawed” and “unreliable” because, by providing “consumers with an image of the package showing butter”, the survey distorted “the real focus of the issue to be decided – namely, do the words of the trademark themselves convey the impression that the product contains butter.”
And, of course, parties seeking to submit survey evidence must make sure that the survey evidence is relevant. In Mattel, supra, the appellant sought to adduce fresh evidence before the applications judge in the form of survey respondents’ answers to the question “Do you believe that the company that makes Barbie dolls might have anything to do with this sign or logo.” The S.C.C. affirmed the exclusion of that evidence, noting that it addressed the issue of possibility of confusion and not the issue of likelihood of confusion. As the survey was not responsive to the point at issue, it was irrelevant and excluded.
Finally, after a party has ensured that it has conducted a proper survey, it must also ensure that the survey evidence is properly submitted to the Court or Board. In Imax Corp. v. Kukje Corp. (2000), 8 C.P.R. (4th) 546 (T.M.O.B., per Partington) the Opposition Board held that a detailed and extensive survey conducted by Angus Reid was inadmissible, because it was submitted as an annex with the affidavit of a person who did not have “any knowledge as to who prepared the study or who conducted the telephone interviews referred to in the study”.
A survey need not be prepared for the proceeding to be relevant. In Remo Imports Inc. v. Jaguar Cars Ltd. (2006), 47 C.P.R. (4th) 1, (F.C.T.D., Shore J), both sides presented copious amounts of survey evidence, but the only survey the Court found persuasive was one prepared by an unrelated third party and not for purposes of litigation.
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Lay witnesses’ opinions as to the strength of a trade-mark will generally not be admissible. Lay witnesses may present their relevant observations in the form of opinions where:
• they are in a better position than the trier of fact to form the conclusion;
• the conclusion is one that persons of ordinary experience are able to make;
• the witness, although not expert, has the experimental capacity to make the conclusion; and
• the opinions being expressed are merely a compendious mode of stating facts that are too subtle or complicated to be narrated as effectively without resort to conclusions.
Generally, proper exceptions to the rule against lay witness opinion evidence will concern the identification of persons, things, writings, value of property or services, distance, time, speed, dimensions, weight, direction, degree of intoxication and mental health. A lay witness’s opinions concerning the strength of a mark are not opinions that lay persons are in a position to form, such as opinions on a person's distance, speed or mental health. Moreover, such a lay witness’s opinions cannot be used to summarize or describe more effectively facts that are too subtle or complicated to be described without drawing any conclusions. (Saputo Groupe v. National Importers, supra).
6) Proving the State of the Register
The state of the Register is an important factor in assessing the potential for confusion and the distinctiveness of any trade-mark. It may indicate the presence or absence of potentially confusing trade-marks, and, to the extent that some marks, or portions of marks, are common, it may assist in determining uniqueness, or distinctiveness of the trade-marks. Since non-distinctiveness is a ground of opposition, and since inherent distinctiveness is relevant in determining confusion, the state of the Register is often considered in opposition proceedings.
However, distinctiveness is not an abstract consideration, but an analysis of the facts, not just as they exist on the Trade-marks Register, but also in the marketplace. For that reason, evidence of marketplace usage is also normally required. That places an onus on any party seeking to rely upon the state of the Register to file both accurate and admissible evidence of the state of the Register, as well as useful information on the current use of those trade-marks, or any others.
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The Registrar does have the discretion to check the Register, in view of the public interest to maintain the purity of the Register (see American College of Chest Physicians, supra). However, the realities of available manpower dictate that the general position of the Registrar is that he/she may not exercise his/her discretion in this respect and thus may only accept registrations appearing on the Register that are properly filed in evidence (Quaker Oats of Canada Ltd/La Compagnie Quaker Oats du Canada Ltée v. Menu Foods Ltd. (1986), 11 C.P.R. (3d) 410 (T.M.O.B., per Troicuk). See also Sandoz Nutrition Ltd. v. Sirois (2002), 27 C.P.R. (4th) 570 (T.M.O.B., per Folz), where an applicant, in its counterstatement, argued that the state of the Register supported the registrability of its NUTRIFORCE mark, but did not specifically file any state of the Register or marketplace evidence. The Board refused to take judicial notice of the state of the Register.
It has been held to be in the public interest to check the Register to confirm the existence of registrations relied upon by an opponent in support of a 12(1)(d) opposition (Quaker, supra, citing reasoning in G.H. Mumm & Cie, Société Vinicole de Champagne, S.A. v. Registrar of Trade-marks (1982), 64 C.P.R. (2d) 223 at 227 (F.C.T.D., per Walsh J.); Gainers Inc. v. Hygrade Food Products Corp. (1995), 63 C.P.R. (3d) 265 (T.M.O.B., per Partington); and Synertech Systems Corp. v. MacDonald (1995), 63 C.P.R. (3d) 272 (T.M.O.B., per Partington)) or oppositions based on 16(1)(b), 16(2)(b) or 16(3)(b) (see Royal Appliance Mfg. Co. v. Iona Appliances Inc. (1990), 32 C.P.R. (3d) 525 (T.M.O.B., per Martin)). However, it has been held that it is not in the public interest to verify the status of a registration cited by an opponent in support of a Section 30 ground of opposition (Hunter Douglas, Inc. v. Newell Industries Canada, Inc. (unreported) [1999] T.M.O.B. No. 58 (March 3, 1999) (T.M.O.B., per Partington) or to conduct a “state of the Register” search to assist an applicant to register its trade-mark (Frank T. Ross & Sons (1962) Ltd. v. Hello Cosmetics Inc. (1994), 53 C.P.R. (3d) 124 (T.M.O.B., per Partington), citing reasoning in John Labatt Ltd. v. W.C.W. Western Canada Water Enterprises Inc. (1991), 39 C.P.R. (3d) 442 at 445-6 (T.M.O.B., per Partington)).
In Rentalex Ltd. v. Leslie Sales Corp. (1992), 47 C.P.R. (3d) 281 (T.M.O.B., per Martin), the Hearing Officer criticized the state of the Register evidence presented, stating that to establish the state of the Register as of a particular date the affiant should have:
(1) conducted the search (see, for example, both Salomon S.A. v. Tricot Exclusive Inc., supra and Royal Bank of Canada v. The Manufacturers Life Insurance Company (unreported) [2002] T.M.O.B. No. 76 (May 21, 2002) (T.M.O.B., per Folz) where the results of a trade-mark search were held to be inadmissible hearsay on the basis that the affiant had not conducted the search);
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(2) indicated when and how the search was carried out (see, for example, Ports International Limited v. Agenco S.p.A. (1991), 40 C.P.R. (3d) 137 (T.M.O.B., per Martin) where the applicant filed an affidavit from a secretary attaching a printout based on “the TMRK database”, without any explanation of the database or how the search was conducted); and
(3) provided copies of the registrations referred to and not just list the registration numbers and trade-marks. (See, for example, Tropicana Products, Inc. v. Wesergold Getrankeindustrie GmbH & Co. KG (1999), 4 C.P.R. (4th) 405 (T.M.O.B., per Partington) where state of the Register evidence consisting of a list of 123 applications and registrations for marks containing a relevant element was given little weight because the affiant did not state she had conducted the search and no registration pages were provided, thus failing to furnish the Board with ownership and identity of wares information.
Current copies of registrations should be provided, as in Lowenbrau Aktiengesellschaft, supra, where it was noted that the state of the Register affidavit contained photocopies of registrations made a year and a half prior to the date of the opposition, and were for that reason given little weight. See also Albert Fisher Canada, supra, where little weight was given to state of the Register evidence because, once again, copies of the registration pages were not provided and the information that was provided did not accord with the type of search purportedly conducted (for example, purportedly directed at “food” classes, the search produced marks for “very nonedible wares”).
Should a party wish to rely upon information in the applicant file history, that file must be produced as evidence See Generation Nouveau Monde v. Teddy, supra and Betonel Inc. v. Permatex GmbH [2006] T.M.O.B. No. 157 (September 22, 2006) (T.M.O.B. per J. Carrière), where the Hearing Officer refused to consider prosecution correspondence, as it had not been properly filed.
The qualifications of the searcher should also be included, to prove the accuracy and reliability of the search results (Swatch S.A. v. Jollymore (1992), 46 C.P.R. (3d) 551 (T.M.O.B., per Martin) and see the Practice Notice, dated May 21, 1997, stating that the electronic Register is now the official Register, for the purpose of obtaining certified copies.
7) Use of Internet Searches of Trade-marks Office Databases
The proof of the state of the Register today is generally done by affidavits reporting on computer search results.
As noted in ITV Technologies, Inc. v. WIC Television Ltd. (2003), 29 C.P.R. (4th) 182 at 192-193 (F.C.T.D., per Tremblay-Lamer J.) aff’d (2005), 38 C.P.R. (4th) 71
481 (F.C.A., per Pelletier J.A.) (an expungement action), functionally, electronic databases can have the same probative value and reliability as commonly accepted sources of information:
In my opinion, official Web sites of well-known organizations can provide reliable information that would be admissible as evidence, the same way the Court can rely on Carswell or C.C.C. for the publication of Court decisions without asking for a certified copy of what is published by the editor.
As indicated above, any presentation of search results must include details of the registrations, such as the associated wares and services and the basis for registration, so care must be taken to ensure the databases searched and documents provided to the Board contain the necessary details, otherwise the results will be afforded much less weight (see, for example, Quebec Maple Products Inc. v. Stafford Foods Ltd. (1988), 20 C.P.R. (3d) 404 (T.M.O.B., per Martin) and Standard Continental Real Estate Inc. v. First Continental Realty Inc. (1991), 38 C.P.R. (3d) 277 (T.M.O.B., per Martin) and Everything for a Dollar, supra ).
Care must also be taken to establish the reliability of the source database. For example, in Sta-Rite Industries Inc. v. GSW Inc. (1999), 87 C.P.R. (3d) 300 (F.C.T.D., per Campbell J.) aff’d (2001), 12 C.P.R. (4th) 24 (F.C.A., per Rothstein J.A.), the applicant’s trade-mark search results, which purported to include Trade-marks Office records, were held to be inadmissible hearsay as the applicant, challenged by the opponent, had not proven the reliability of the database, even though the CD-ROM service in question (published by CD Name Search Corp.) had been widely used by trade-mark practitioners and had been relied upon in previous cases (also see Ports International, supra and General Mills, Inc. v. T.L.I.G. Marketing Corp. (unreported) [2000] T.M.O.B. No. 49 (March 31, 2000) (T.M.O.B., per Folz) where, because of Sta-Rite, supra, the Board had “doubts” concerning the admissibility of that CD-ROM search).
However, other subsequent decisions have taken a less rigid view towards electronic databases. In Premiere Vision Inc. v. Haggar Clothing Co. (2000), 5 C.P.R. (4th) 408 (T.M.O.B., per Martin) the CD-ROM search was accepted as the affiant provided evidence as to the source of the CD-ROM and to its reliability as a reasonably accurate reflection of the Trade-marks Office records. Sleep Products International Inc. v. Park Avenue Furniture Corp. (2002), 25 C.P.R. (4th) 263 at 270 (T.M.O.B., per Bradbury) explicitly does not follow Sta-Rite and admits the very same database Sta-Rite rejects, accepting that the information contained therein came from the Trade-marks Office’s database and was included in the affidavit of a professional and experienced searcher.
In Vitasoy International Holdings Limited v. Parmalat Dairy & Bakery Inc. 2004), 41 C.P.R. (4th) 273 (T.M.O.B., per Bradbury), the opponent, at the oral hearing, 72 challenged the applicant’s state of the Register evidence, which was based on Thomson & Thomson searches. The opponent argued that it was a “third party” database, and thus not the Trade-marks Office records, and specifically contained an accuracy disclaimer. However, the Board Member refused to accept the challenge, noting that the database is of the Trade-marks Office records, there were no identified errors or inaccuracies, the opponent did not cross-examine the affiant, and the objections were not raised until the oral hearing. Vitasoy was followed in Unilever Canada Inc. v. Red Rose Canada Inc. (2005) 47 C.P.R. (4th) 421 (T.M.O.B., per Folz).
8) Marketplace Use
Regardless of the accuracy of the state of the Register, without accompanying evidence on the marketplace use of such marks, the Registrar will give little or no weight to such evidence. A combination of relatively weak marketplace evidence and a number of relevant marks may be enough. In Alticore Inc. v. Nutravite Pharmaceuticals Inc. (2003), 27 C.P.R. (4th) 99 at 110-111 (F.C.T.D., per Kelen J.), “…a significant number of trade-marks sharing similar features registered in the names of different parties, combined with some proof of commercial use” was sufficient to give rise to the inference that there was no confusion between the marks in question. Justice Kelen arrived at this finding despite commenting that the evidence of commercial use “could be stronger”, accepting that some 35 registered trade-marks shared the element “NUTR” in common with each other and therefore the consumer should be accustomed to distinguishing marks with the element “NUTR” in common.
If enough relevant marks are revealed by the search, the Board will infer that at least some of the marks are in active use and that consequently, consumers have become somewhat accustomed to seeing the relevant marks and can therefore distinguish among such marks based on their other components. (Kellogg Salada Canada v. Maximum Nutrition Ltd (1992), 43 C.P.R. (3d) 349 (F.C.A., per Stone J.A.), and also see Labatt Brewing Co. v. Molson Breweries, A Partnership (1991), 35 C.P.R. (3d) 108 (T.M.O.B., per Martin) and Ocean Fisheries Ltd. v. A. Raptis & Sons (1991), 35 C.P.R. (3d) 473 (T.M.O.B., per Martin)). The critical number beyond which marketplace evidence does not seem to be absolutely required is difficult to discern. It will depend upon the number of owners of the relevant marks, as the existence of fewer owners diminishes the likelihood of common adoption (see, for example, Collection Banana Split Inc. v. Bjarnason + Associates Interiors Inc. (unreported) [1999] T.M.O.B. No. 72 (March 24, 1999) (T.M.O.B., per Herzig)), and upon the degree to which the associated wares or services overlap. Generally speaking, a review of the case law indicates that where at least fifteen relevant marks are found, inferences of active use and consumer familiarity will be drawn (see, for example, Ocean Fisheries, supra, Labatt Brewing Co. v. Molson Breweries, A Partnership 1991, supra, FutureKids, Inc. v. BKW Investments Pty Ltd (unreported) [1999] 73
T.M.O.B. No. 251 (Dec. 30, 1999) (T.M.O.B., per Partington)). And in AES Properties Corp. v. Foubert (unreported) [1999] T.M.O.B. No. 22 (February 5, 1999) (T.M.O.B., per Vandenakker), 18 relevant marks were found to be a sufficient number. Conversely, a number of cases exist where relevant marks numbering under 10 were found to be too few on which to draw inferences (see, for example, Bayer AG v. Pharmascience Inc. (1997), 75 C.P.R. (3d) 535 (T.M.O.B., per Martin), where less than 6 “AS” prefix trade-marks for analgesic products was not enough, and Vivat Holdings Limited v. Levi Strauss & Co (2005), 41 C.P.R. (4th) 8 (F.C.T.D., per Layden-Stevenson), where 8 examples of “double arch, double stitch” designs on jeans was held to not be evidence of extensive use.) And 13 trade-marks were too few in All Treat Farms Ltd. v. A.C. Schutzman Co., Ltd. (1997), 75 C.P.R. (3d) 78 (T.M.O.B., per Partington)).
As discussed above, the case law has generally held that for a mark or business name to be considered relevant in determining common adoption, the mark or name should be used in association with the same or similar wares and services as the applied-for mark. For example, in Maritime Life Assurance Co. v. Maritime Medical Care Inc. (unreported) [1999] T.M.O.B. No. 164 (August 24, 1999) (T.M.O.B., per Folz), third party registered marks were held to not be “of much assistance” as only one of the marks was registered for use in association with the relevant services. (See also Hudson’s Bay Company v. Hallmark Cards, Inc. (2003), 30 C.P.R. (4th) 231 (T.M.O.B., per Bradbury), where 30 trade-marks were insufficient for the Hearing Officer to draw any meaningful conclusions, due to their nature and number). However, in an apparent departure of sorts, in Procter & Gamble v. Hunter Packaging (1999), 2 C.P.R. (4th) 266 (T.M.O.B., per Partington) the Board accepted as relevant the existence of “a number of registrations with COAST”, even though only two of the registrations covered wares related to those of the parties, and 24 corporate/business names that incorporate COAST, even though they involved products or trade channels unrelated to the wares and trade of the parties. Although not explicitly stated, the marks and names presumably evidenced common adoption relevant to the ultimate question of confusion.
While an opponent does not need to file evidence of actual confusion, where the applicant has filed evidence of co-existence without confusion, the opponent should not rely on the burden of proof of the applicant and assume that it does not need to file evidence of confusion. While the relevant issue is "likelihood of confusion" and not "actual confusion", the lack of "actual confusion" is a factor which the courts have found of significance when determining the "likelihood of confusion". An adverse inference may be drawn when concurrent use on the evidence is extensive, yet no evidence of confusion has been given by the opponent. (Dion v. Dior, supra). An adverse inference will generally not be made where the applicant fails to provide any evidence of co-existence without confusion. (Vivat v. Levi Strauss, supra). 74
9) Similar Business Names and Domain Names
With respect to business names incorporating an element of a mark, inferences of the state of the marketplace are more difficult, as search results listing business names often do not indicate the nature of the business. Furthermore, as subsequent investigations so frequently confirm, many, if not most, of the businesses mentioned on a NUANS search are not active, and may never have been operated. Nonetheless, a party relying on the existence of relevant business names needs to provide the Board with information concerning the businesses’ areas of activity and whether the names are in use, which, of course, if not provided by the businesses themselves, often leads to hearsay difficulties. For example, in Vienna Sausage Manufacturing Co. v. Vienna Meat Products Ltd. (unreported) [1999] T.M.O.B. No. 245 (Dec. 14, 1999) (T.M.O.B., per Martin) the applicant found five establishments with names that incorporated the mark in question, but the affidavits which contained information, based on telephone discussions, meant to establish that the business names were in active use and in fields related to the wares in question, were held inadmissible as hearsay.
Similarly, results from searches of various business name and telephone databases showing entities with names incorporating relevant mark components were found to be of little aid unless the nature of the wares or services associated with the commercial names are shown to be related to those of the application (see, for example, John Forsyth Inc v. The Hudson’s Bay Company (unreported) [2000] T.M.O.B. No. 62 (April 12, 2000) (T.M.O.B., per Partington) and discussion, below). In Toshiba of Canada Ltd. v. Chenel Corp. (2003), 30 C.P.R. (4th) 240 (T.M.O.B., per Folz), 144 business names were found that incorporated an element of the trade-mark in question, but this was dismissed as being of low probative value since there was no indication as to the types of business, if any, that were carried on. This despite the fact that an inference was indeed made with respect to use when 21 relevant trade-marks were revealed in a state of the register search.
Also, in Maritime Life Assurance, supra “several dozen” businesses having names that incorporated a relevant mark component were also apparently found to be of no help, in part because it was not shown that any businesses were active and that, even if active, whether the business names had been used as trade-marks or trade-names. In Venator Group Canada Inc. v. Upstein’s Limited (2000), 1 C.P.R. (4th) 142 (T.M.O.B., per Martin), where 40 domain names incorporated a component of the mark, the Board gave the evidence no weight as “there is no indication that any of them have been actively used in association with any type of business, much less a clothing business”.
However, in Max Mara Fashion Group S.r.l. v. Jay-Gur Import Inc. (unreported) [1999] T.M.O.B. No. 217 (November 11, 1999) (T.M.O.B., per Martin), where the affiant claimed in its affidavit that telephone conversations with various businesses revealed that 11 relevant business names were active in an area of 75 business related to the wares in question, the Board concluded: “Ordinarily the hearsay nature of such evidence would not allow me to make an inference that a particular business name is in active use in association with certain goods. However, where a significant number of such enquiries are made, I consider that it is reasonable to infer that at least some of the business names canvassed are in active commercial use [and engaged in the relevant field]”(Max Mara, supra at para. 18).
Similarly, although no evidence of use or nature of the businesses was given, the Hearing Officer in Vision-Care Limited v. Hoya Corporation (2000), 7 C.P.R. (4th) 331 (T.M.O.B., per Bradbury) found “about 20” business names incorporating the mark established, “given the large number”, that the mark was commonly adopted. Such an approach, however, appears novel. Marketplace evidence will still usually mean providing admissible evidence, not hearsay, on the use of other trade-marks or business names. As indicated above, an affidavit from someone who telephones trade-mark owners or businesses, asking for information on the use of such marks or business names, and then recording what these respondents said is indeed generally inadmissible as hearsay. On the other hand, someone who sees a trade-mark in use, photographs a mark, shows internet pages relating to the business’ website, or receives information showing use of a trade-mark, can swear to such information on the basis of personal knowledge.
10) Other Internet Searching
In Wal-Mart Stores, Inc., v. Tough Stuff Distributors, Inc. (1999), 1 C.P.R. (4th) 271 (T.M.O.B., per Folz), the Board accepted the results of searches of two on- line databases containing articles appearing in various major Toronto newspapers, stating that there was nothing in evidence to make them question the reliability or accuracy of the computer transcriptions.
Internet evidence consisting of instances of descriptive usage of the applied for mark was also accepted in Pillsbury Co. v. Alantra Imports Co. (1999), 1 C.P.R. (4th) 252 (T.M.O.B., per Partington) in support of a 12(1)(b) ground of opposition, with the Board noting that the evidence had not been challenged by the applicant.
One issue that has arisen is the extent to which the websites cited in proceedings are accessed by Canadians.
In Sta-Rite, supra, an applicant responding to an opposition based on 12(1)(b) documented in its affidavit how various searches conducted “on the Internet” essentially failed to reveal any usage supporting the opponents 12(1)(b) allegations. While holding the affidavit evidence admissible, the Court gave it no weight, indicating that for such a search to prove the proposition “that there is no 76 competition in the marketplace” for the mark in question, “a much more detailed and complete body of evidence must be established.” The Court specifically indicated that “at the very least it would be necessary to know how professionally conducted and extensive the web search was” (Sta-Rite, supra at 306).
In Anheuser-Busch, Inc. v. Molson Breweries, A Partnership (unreported) [1999] T.M.O.B. No. 49 (February 24, 1999) (T.M.O.B., per Vandenakker) the opponent sought to show that the applied mark BREW WEAR designated the kind or quality of wares and services as per Section 10, by introducing web pages downloaded from three Internet sites that used BREW WARE in association with the applicant’s wares and a catalogue ordered from one of the sites. The Board held the evidence to be of little help, in large part because no evidence was introduced concerning whether any of the sites were located in Canada or the extent to which these sites were accessed by Canadians. Similarly, results of an Internet domain name search were accorded no weight, as relevant domain names appeared to be associated with web sites outside Canada and no evidence was submitted showing Canadians had accessed the sites (Procter & Gamble, supra; also see Trek Bicycle Corporation v. Canadian Lung Association (unreported) [2000] T.M.O.B. No. 81 (May 17, 2000) (T.M.O.B., per Partington).
However, one now must be wary of non-traditional sources for unreliability that can be introduced in electronic media. For example, in Everything For a Dollar, supra, a CD-ROM database search was accorded less weight because the data had been “seeded” to detect unauthorized use, which the Board understood to mean that incorrect data had been added to the database.
11) Proving Meaning
A number of opposition grounds, most notably non-compliance with Section 12(1)(b) (“clearly descriptive”) and Section 10 (“designating the kind, quality . . . of wares and services”) often require, to varying degrees, that evidence of the mark’s “meaning” be produced. The most common form proof of meaning takes is that of a dictionary definition. However, other sources and means are valuable as well, particularly when dictionaries are of no or little assistance: for example, if the adoption of the meaning in issue is a fairly recent occurrence or the mark or meaning is vernacular, idiomatic or exclusive to an industry, it may not be included in dictionaries available at the time. Clearly, providing substantial and numerous instances of third parties using the mark in a descriptive capacity can be most persuasive. For example, in Vienna Sausage, supra, the opponent demonstrated that VIENNA was widely used in the meat industry to describe or identify a type of meat product by purchasing from various supermarkets a number of products that used VIENNA on its packaging or labeling in just such a descriptive fashion. And in Modextil Inc. v. Mondo, Inc. (unreported) [1999] T.M.O.B. No. 38 (T.M.O.B., per Partington) the affiant showed CASH-COTTON to be a type of textile fibre by identifying various importers/wholesalers who 77 import and sell clothing bearing labels which use CASH-COTTON to identify yarn, corroborated by label specimens.
Beyond actual products, instances of descriptive usage in various publications can also be persuasive, although the weight attributed will depend on the nature of the publication, and, relatedly, the extent of its exposure to relevant parties, especially for 12(1)(b) grounds. For example, the fact that Canadian Fish Inspection Regulations used GASPE CURE to identify a type of fish product appeared to be most persuasive in a Section 10 based opposition in Canus Fisheries Ltd. v. Assoc. Québécoise de l’Industrie de la Pêche (unreported) [1998] T.M.O.B. No. 187 (November 12, 1998) (T.M.O.B., per Partington). However, a number of 12(1)(b) based oppositions have failed in spite of some evidence of descriptive use on the basis that the average Canadian consumer would not be familiar with the descriptive usage to the extent required for a “clearly descriptive” finding. For example, in Imperial Tobacco Ltd. v. Rothmans, Benson and Hedges Inc. (unreported) [1999] T.M.O.B. No. 54 (March 1, 1999) (T.M.O.B., per Bradbury), little weight was given to seven publications, some of foreign origin, which in their title and/or text employed GOLD LEAF (the applicant mark) to mean tobacco; the Board noted that it doubted the materials were familiar to the average Canadian consumer of manufactured tobacco products or even to the average Canadian tobacco retailer. And in Canadian Wine Institute v. Laboratoires Arkopharma S.A. (unreported) [1999] T.M.O.B. No. 102 (May 18, 1999) (T.M.O.B., per Herzig), FRENCH PARADOX was found to not be “clearly descriptive” or “deceptively non-descriptive” of a medical phenomenon in part because the opponent’s evidence of a book entitled The French Paradox and Beyond and booklets entitled Wine & A Healthy Lifestyle (produced by the opponent and 50,000 of which were allegedly distributed to Canadian consumers), which name and discuss the medical phenomenon, did not satisfy the Board that the average Canadian was acquainted with the term.
With its breadth of coverage and the ease with which it can be searched, the Internet is also often the source of submissions evidencing descriptive use. For example, in Pillsbury Co., supra, the opponent introduced 19 documents taken from the Internet, which employed ROLLED PIZZA in some descriptive capacity. Such evidence, combined with dictionary definitions of “rolled,” was sufficient to satisfy the opponent’s 12(1)(b) evidentiary burden. However, in Anheuser- Busch, Inc. v. Molson Breweries, A Partnership, supra, three Internet sites employing BREW WEAR in a descriptive fashion were found insufficient to sustain a Section 10 opposition, in part because, as mentioned above, the sites’ exposure to Canadians was not shown.
Where the descriptive usage is particular to a specialized field, it may also be prudent to elicit the experiences and opinions of individuals engaged in that field. In Apotex Inc. v. Glaxo Group Ltd (unreported) [1999] T.M.O.B. No. 105 (May 19, 1999) (T.M.O.B., per Herzig) the opponent alleged NEBULES was clearly descriptive of certain pharmaceutical preparation and substances. Both parties 78 produced affidavits from professors of medicine, attesting to their respective experiences with the term NEBULES and to the results of their respective consultations of various medical publications. The Board found the term not clearly descriptive, on the grounds that the medical publication evidence favoured the applicant and the applicant’s medical affiant was the more credible, in part because of his greater authority and experience in the field.
12) The Significance of Use / Registration in Other Jurisdictions
In determining whether a trade-mark is registrable in Canada, the Courts in many instances have had to consider the relevance of foreign registration and use of the mark in question. For example, in assessing the likelihood of confusion or in considering a mark’s distinctiveness, applicants have attempted to rely on evidence of use and registration of a mark in jurisdictions outside of Canada. The weight, if any, such evidence should be afforded in opposition proceedings has attracted judicial and scholarly attention alike. In The Canadian Law of Trade-marks and Unfair Competition (3rd Edition), legal scholar Harold G. Fox comments:
In arriving at a conclusion whether or not a mark offered for registration is confusing with a mark previously registered or previously used or made known in Canada regard is to be had only to the market of this country and not to any market abroad. It is immaterial that a mark may have been used extensively in another country and may have acquired a considerable reputation there, if it has not been used or made known in Canada. This principle is the same whether one is considering the question of acquired distinctiveness or whether one is examining the question of possible confusion. (p. 160)
The Courts originally adopted the principle set out by Fox and have found evidence of foreign registration and use to be “immaterial”. In a leading case on this point, Haw Par Brothers International Ltd. v. Registrar of Trade-marks (1979), 48 C.P.R. (2d) 65 (F.C.T.D.), Marceau J. held that “It is clear that little can be drawn from the fact that the appellant has already had its trade-mark registered in numerous other countries, in some of which, moreover, where the two marks in question co-exist: the Registrar must base his decision on Canadian standards, having regard to the situation in Canada”. Supporting and extending this position, Jerome A.C.J. has stated that “no significance can be attached to failure to oppose or object to registrations in other jurisdictions since such actions, of necessity, have their basis entirely in foreign law and procedure” (Sun-Maid Growers of California v. Williams & Humbert Ltd. (1981), 54 C.P.R. (2d) 41 (F.C.T.D.)). Accordingly, the Courts, as a rule, have accorded only “little weight” to the co-existence of the trade-marks at issue in foreign trade-mark registers in determining the likelihood of confusion in Canada (see for example, 79
Vivat, supra; Max Co. v. OfficeMax Inc. (2001), 15 C.P.R. (4th) 99 (T.M.O.B., per Partington); Senza Inc. v. Apparel Ventures, Inc. (2001), 14 C.P.R. (4th) 243 (T.M.O.B., per Partington); Ditta F.R.A. Di Mignone Guiseppe E Cherio Vittoria SNC. v. Johnson & Johnson Ltd. (1974), 13 C.P.R. (2d) 105 (F.C.T.D., per Cattanach J.)).
It should be noted that the principle of according little weight to a trade-mark’s use, registration and reputation in another jurisdiction is applied by the Courts to analysis of the opponent’s evidence as well. For example, in United States Shoe Corp., supra, the Opposition Board, rejecting the opposition, found the opponent’s evidence of its mark’s distinctiveness in the United States to be irrelevant. In Jelly Belly Candy Co. v. Aran Candy Ltd. (2007) 62 C.P.R. (4th) 459 (June 21, 2007) (T.M.O.B. per Bradbury) the Opposition Board gave little weight to the opponent’s evidence of alleged instances of confusion in another jurisdiction since the mark involved in the instances of confusion was not the subject of the proceedings.
However, a more relaxed approach to the issue of foreign registration and use has also been advanced. Notably, in the infringement/passing off case Kellogg Co. v. Imperial Oil Ltd. (1996), 67 C.P.R. (3d) 426 (Ont. Gen. Div., per Kiteley J.), the Court broadly asserted that “Co-existence without confusion outside Canada is relevant” (see also Institut National des Appellations d’Origine des Vins et Eaux-de-Vie v. Andres Wines Ltd. et al. (1987), 16 C.P.R. (3d) 385 (Ont. H.C.J., per Dupont J.), aff’d (1990), 30 C.P.R. (3d) 279 (O.C.A., per curiam). Also in Weetabix of Canada Ltd. v. Kellogg Canada Inc. (2002), 20 C.P.R. (4th) 17 at 45 (F.C.T.D., per Blais J.), the Court indicated that “coexistence of the parties’ trade- marks in the United States for many years is a good indication of the lack of possible confusion between the trade-marks here in Canada and is a determinative factor.” In support of this view, the Court referred to Sun-Maid Growers of California, supra, where Jerome A.C.J., after accepting the premise that evidence from foreign jurisdictions is irrelevant to the question of distinctiveness and use in Canada, went on at p. 49, as follows:
I question, however, whether this principle can be extended to the point where evidence that in the United States market which is so similar to our own, the same marks have co-existed in respect to the same wares without confusion, is considered to be irrelevant to the question of the likelihood of confusion in Canada.
In Toshiba of Canada Ltd., supra the Hearing Officer noted that “concurrent use of identical marks has had the effect of mitigating the issue of confusion in some cases” (at p. 249). However, she went on to note that in this case it was not determinative, partly because no indication had been given of the extent of use of the two marks in the U.S.
Though applied less liberally, this line of reasoning is also found in those opposition cases which propose that state of the register evidence of other 80 countries is relevant in so far as inferences can be drawn from it about the state of the marketplace (for example, Interstate Brands Co.-Licensing Co. v. Becker Milk Co. (1998), 81 C.P.R. (3d) 270 (F.C.T.D., per McGillis J.) aff’d (2000), 5 C.P.R. (4th) 573 (F.C.A., per Evans J.A.)) and Quantum Instruments, Inc. v. Elinca S.A. (1995), 60 C.P.R. (3d) 264 (T.M.O.B., per Partington)).
Relatedly, evidence furnished by the applicant of use of the trade-mark in question in a foreign jurisdiction is also given little weight when determining acquired distinctiveness. For example, in Max Co. v. OfficeMax Inc., supra, although there was sufficient evidence of extensive use of the trade-mark in the United States, the Opposition Board deemed such evidence to be relevant only in so far as the Canadian public would have access to such displays of the mark. This standard has also been applied to evidence of the acquired distinctiveness of the opponent’s mark (see Express File, Inc. v. HRB Royalty, Inc. (2001), 21 C.P.R. (4th) 274 (T.M.O.B., per Bradbury), aff’d (2005), 39 C.P.R. (4th) 59 (F.C., per Beaudry J.).
13) Foreign Decisions
Recent case law suggests that foreign decisions involving the same trade-marks may be relevant and even persuasive but only if evidence is presented concerning how closely the law of the foreign jurisdiction resembles the law in Canada. The T.M.O.B. will not take judicial notice of such similarities, even when well known. In Waterford Wedgwood PLC v. Forma-Kutzscher GmbH (unreported) [2006] T.M.O.B. No. 27 (January 9, 2006) (T.M.O.B., per Carrière), the applicant attempted to rely on the fact that it had been successful in obtaining the registration of its mark in the U.K. and in Ireland. This was not permitted, however, because there is no evidence provided of the law of trade-marks applicable in Ireland and the United Kingdom. “Foreign law is considered facts that must be proven. In the absence of such evidence it is difficult to give any weight to those decisions.” (See also, Spirits International N.V. v. SC Prodal 94 SRL, supra)
14) Relevance of Surrounding Circumstances
Surrounding circumstances can sometimes be used to tip the scales, particularly in the opponent’s favour, since doubt is generally resolved against the applicant.
Establishing that a mark is famous is a surrounding circumstance that can be relevant when opposing the registration of a mark. A mark that is “well known” or “famous” is “one which is recognized by the public through extensive sales and media advertising, and not one which is known solely by those who consume [the goods to which the mark relates]” (G.H. Mumm & Cie v. F.G. Bradley (1983), 80 C.P.R. (2d) 176 at 180 (T.M.O.B., per Partington). However, such a conclusion 81 cannot be reached simply on the basis of the volume of sales or the number of countries in which the marks is registered (FMC v. SS&C Technologies Canada (2006) T.M.O.B. (July 5, 2006) (T.M.O.B. per Bradbury). The finding that a mark is famous has been variably applied in opposition proceedings. Generally it is easier to persuade a court that confusion is likely when the plaintiff’s mark is well- known. In Danjaq Inc. v. Zervas (1997), 75 C.P.R. (3d) 295 at 303 (F.C.T.D., per Lutfy J.), the Court stated:
The nature of the wares and services will be a less important factor where the opponent to the registration has a strong trade-mark. It is trite law that the stronger the mark, the greater the ambit of the protection it will be afforded.
However, a finding that a mark is well-known can sometimes work against an opponent in the determination of likelihood of confusion, the rationale being that no one would confuse the products represented by the lesser known mark with the products of the well known mark (Imperial Oil Ltd. v. Superamerica Stations Inc. (1965), 47 C.P.R. 57 (Ex.Ct., per Jackett J.). Two recent Supreme Court cases have clarified the Canadian jurisprudence on famous trade-marks (Mattel U.S.A. v. 3894207 Canada, 2006 SCC 22 (per Binnie J.) and Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. Boutiques Cliquot Ltée, 2006 SCC 23 (per Binnie J.). In these cases, the Court rejected the suggestion found in several decisions of the Federal Court of Appeal that there needs to be some resemblance or connection between the wares or services of the senior user and those of the junior user (see United Artists Corp. v. Pink Panther Beauty Corp. (1998), 80 C.P.R. (3d) 247 (F.C.A., per McDonald J.A.); and Toyota Jidosha Kabushiki Kaisha v. Lexus Foods Inc. (2000), 9 C.P.R. (4th) 297 (F.C.A., per Linden J.A.)). The Supreme Court held that some trade-marks may be so well known that their use by a junior user in connection with any wares or services would generate confusion.
Establishing that a mark belongs to a family of marks can also be beneficial. In Reliable Hosiery Mg. Inc. v. Warnaco Inc. (2001), 16 C.P.R. (4th) 568 (T.M.O.B., per Partington), establishing that the opponent owned a family of marks was one factor weighed by the Registrar in refusing the application. (See also McDonald’s Corporation et al. v. Yogi Yogurt Ltd. et al. (1982), 66 C.P.R. (2d) 101 (F.C.T.D., per Cattanach J.)). Recently, the Federal Court reversed an Opposition Board ruling and held that the SECRET brand, which was already distinctive of hosiery, would also be distinctive in relation to undergarments and therefore not likely to be confusing with the opponent’s SECRET SHAPERS trade-marks. The evidence supported the applicant’s arguments that it “had established a well-recognized trade-mark and a family of connected marks,” and the court found as a result that “consumers are sufficiently familiar with the SECRET trade-mark that they would probably believe that closely related products, such as undergarments, derived from the same source.” (Manufacturiers de Bas de Nylon Doris Ltée v. Warnaco Inc. (2004), 38 C.P.R. 82
(4th) 519 (F.C., per O’Reilly J.) rev’g (2002), 28 C.P.R. (4th) 401 (T.M.O.B., per Bradbury)).
Again this is not always the case. Confusion under 12(1)(d) may be found even in circumstances where the applicant owns a trade-mark registration for a similarly named product. In Firezorb International Inc. v. Western Industrial Clay Products (unreported) [2002] T.M.O.B. No. 126 (November 8, 2002) (T.M.O.B., per Herzig) an application for MULTI-ZORB PLUS COMMERCIAL/ INDUSTRIAL/FOOD SERVICE ABSORBENT was refused, even though the applicant already owned a registration for MULTI-ZORB HOUSEHOLD ABSORBANT, since it was confusing with MULTIZORB registered for absorbent particulate material treated with fire-fighting and fire-retardant chemicals, solutions and compounds.
Canada’s bilingual status may be an additional “surrounding circumstance”. An opponent was successful in Charles of the Ritz Group Ltd. v. C and W Garments Ltd. (1986), 9 C.P.R. (3d) 566 (T.M.O.B.). In this case, the applicant was attempting to register the mark LEFT BANK. The opponent successfully alleged that although the mark bore no similarity in appearance or sound to its mark RIVE GAUCHE, it conveyed the same idea (the applicant’s mark was a direct translation of RIVE GAUCHE). The Hearing Officer quoted from Les Vins La Salle Inc. v. Les Vignobles Chantecler Ltée (1985), 6 C.P.R. (3d) 533 (T.M.O.B., per Troicuk) that given the bilingual nature of Canada (or parts of it), “the question of confusion should be assessed in a bilingual context in which both the English and French languages are accorded equal importance” (p. 571). While admitting that a minority of Canadians are bilingual, it is nevertheless reasonable to assess confusion from the standpoint of a bilingual consumer.
In another case, 9013-0501 Quebec v. Bluedot Jeanswear (unreported) [2002] T.M.O.B. No. 37 (March 19 2002) (T.M.O.B., per Herzig) aff’d (2004), 31 C.P.R. (4th) 361 (F.C., per Beaudry J.) a proposed use application for RAGE JEANS for clothing was opposed, inter alia, on Section 12(1)(d) due to confusion with the ORAGE mark registered for clothing. Although unsuccessful, the applicant argued that a Francophone or bilingual Canadian would understand ORAGE to mean “thunderstorm” and would sound the marks differently. On appeal, the court noted that confusion will be found “if either an Anglophone consumer, a Francophone consumer or a bilingual consumer… is likely to be confused”. The evidence confirmed that both ORAGE and RAGE were similar visually and orally and would thus likely confuse Francophone and bilingual customers.
IV Filing New Evidence on Appeal
Finally, a brief word on adducing evidence on appeal. Section 56(5) allows parties to file additional evidence on appeal. A party who did not file any evidence at the Board stage may subsequently adduce evidence on appeal. In 83
Brain Tumor Foundation of Canada v. Starlight Foundation (2001), 11 C.P.R. (4th) 172 (F.C.A.), Richard C.J. held unequivocally that new evidence can be adduced on appeal, whether it is a Section 45 proceeding or an opposition proceeding, even if no evidence was initially submitted to the Registrar. (Also see Austin Nichols & Co. v. Cinnabon, Inc. (1998), 82 C.P.R. (3d) 513 (F.C.A., per Décary J.A.) and Canadian Tire Corp v. Foxco Ltd. (2000), 4 C.P.R. (4th) 482 (F.C.T.D., per McGillis J.)).
Traditionally, a Court will review decisions of the Registrar under a reasonableness simpliciter standard (see Mattel, Inc. supra, (S.C.C., per Binnie J.) and Tradition Fine Foods Ltd. v. Group Tradition'l Inc. 2006 FC 858 (F.C. per Blanchard J.). However, new evidence adduced on appeal that would materially affect the decision under review can have the effect of shifting this standard to one of correctness. (see for example, Loblaws Inc. v. No Frills Auto and Truck Rental Ltd., supra)