A recent decision of the Trade-mark Opposition Board ("the
Opposition Board") has confirmed the admissibility of evidence
obtained by using the Wayback Machine.
In this case the applicant applied for a trade-mark based on use
in Canada since at least February of 2002. The application was
opposed on the grounds that, among others, the application did not
comply with the requirements of the Trade-marks Act
("the Act") because the applicant had not used the
trade-mark in Canada in association with the applied for wares and
services since the date of first use.
The hearing officer observed that the applicant bears the legal
onus of establishing, on a balance of probabilities, that its
application complies with the requirements of the Act. There
is, however, an initial burden on the opponent to present
admissible evidence from which it could reasonably be concluded
that the facts alleged to support each ground of opposition
To the extent that the relevant facts relating to a ground of
opposition based on such non-compliance are more readily available
to the applicant, the evidentiary burden on the opponent in respect
of such ground is lower. In addition, the opponent may rely on the
applicant's evidence if it is inconsistent with the
In this case the opponent filed the affidavit of an articling
student which contained the results of a search conducted through
the Internet Archive website known as the Wayback Machine relating
to the applicant's mark. The student printed copies of pages
from specific dates in 2002 of archived versions of the
applicant's website as well as an event calendar which was
reproduced at the site.
The student was cross-examined on his affidavit and specifically
asked whether he was aware the Wayback Machine site contained a
list of limitations, which included the following:
When a dynamic page of a website contains forms, java script or
other elements that require interaction with the originating host,
the archive will not contain the original site; and
When you're looking at the collection of archive sites, one
will find sometimes broken pages and missing
The student admitted he hadn't seen these limitations and he
did not know whether the printouts obtained represented a complete
representation of the entire website, including the graphics and
functionality, as it existed in February 2002.
The hearing officer accepted the admissibility of the evidence
produced by the Wayback Machine and that it was generally reliable.
Reference was made to another decision of the Opposition Board
which had concluded that such evidence was suitable for satisfying
the light initial burden under grounds of this type. However,
notwithstanding the conclusion concerning admissibility, the
hearing officer was not prepared to conclude that the evidence was
sufficient to satisfy the initial burden on the opponent that the
applied for mark had not been used at least as early as February
In trade-mark oppositions issues relating to past use of a
trade-mark frequently arise. In this regard it is useful to make
use of evidence obtained by using the Wayback Machine.
However, as noted above, counsel must keep in mind the potential
problems with this type of evidence.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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