A recent decision of the Federal Court has clarified what an
opponent has to prove in the context of an opposition based on lack
of distinctiveness of the applied-for mark.
The applicant applied for the trade mark LOCAL for use in
association with restaurant, bar and lounge services, food take-out
services and related bar paraphernalia.
The opponent opposed the application. By the time of the
hearing of the opposition, the opposition was limited to the ground
that the trade mark applied for was not distinctive because it was
not capable of distinguishing the applicant's services from the
services of others, particularly the services of the opponent
provided under the trade names LOCAL522 and LOCAL510.
The Trade-marks Opposition Board dismissed the opposition on the
basis that the opponent had not made out its case. The opponent
appealed to the Federal Court and submitted additional evidence
relating to the issue of distinctiveness.
When new evidence is filed on an appeal from the Board that is
significant and would materially affect the decision, the court has
an unfettered discretion to consider the matter and come to its own
conclusion as to the correctness of the Board's decision.
The judge summarized the test to be applied where there is an
allegation that a reputation of a mark negates the distinctiveness
of the applied-for mark as follows:
The evidential burden lies on the opponent who claims that the
reputation of its mark prevents the other party's mark from
being distinctive. However, a burden remains on the applicant
to prove that its mark is distinctive;
A mark should be known in Canada to some extent to negate
another mark's distinctiveness;
Alternatively, mark can negate another mark's
distinctiveness if it is well known in a specific area of
An opponent cannot simply claim that its trade mark is known in
Canada, and it must present clear evidence to support its
The reputation of the mark can be proven by any means;
The decision-maker must weigh the evidence on a case-by-case
To give effect to the requirement that a mark be known to some
extent or well-known as noted above, the courts have also taken the
position that the evidence presented to attack distinctiveness must
be "substantial, significant and sufficient."
When the judge reviewed all of the evidence he was not satisfied
that the opponent had shown that reputation of its trade names was
"substantial, significant or sufficient" and had not
satisfied the tests set out above despite having had two
opportunities to do so.
An opponent relying on a ground of opposition based on lack of
distinctiveness needs to file evidence to show that the reputation
of its trade mark(s) or trade name(s) was, at the relevant date,
"substantial, significant or sufficient" in order to
negate the distinctiveness of the applied-for mark.
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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