A recent decision of the Federal Court emphasizes the importance
of ensuring that expert witnesses understand their independent
advisory role to the Court.
The Applicant's Marks
The applicant applied to register two trade mark applications
which were primarily made up of Chinese characters. The
applications were based on proposed use in association with bakery
type goods, among others.
The opponent opposed the applications on the basis that the
applied for marks were confusing with the two registered trade
marks owned by it which were also primarily made up of Chinese
The opponent filed evidence in the oppositions which included an
affidavit of an expert in the field of Chinese language studies.
She acknowledged that the applicant's Chinese characters were
written in a different script style as compared to those in the
opponent's mark. However she said that despite this difference
that the majority of the Chinese characters of the applications and
the first two Chinese characters of the opponent's mark would
be read the same, would sound the same and would be translated into
the same English word(s), irrespective of the differing script
styles. The difference would be akin to a person reading and
understanding English language text in Arial font, as compared to
Times New Roman font.
The Hearing Officer's Decisions
The hearing officer concluded that this was a situation in which
it would be appropriate to consider the impression of the average
Canadian consumer who reads and understands Chinese characters when
determining the likelihood of confusion between the parties'
The hearing officer concluded that when all of the surrounding
circumstances were considered, in particular the overlap in the
nature of the parties' wares and trade and the similarities in
sound, appearance, and ideas suggested, she was not satisfied that
the applicant has discharged its burden of showing, on a balance of
probabilities, that there is no reasonable likelihood of confusion
between the applied for marks and the opponent's trade marks
with respect to bakery type goods.
The applicant did not file any evidence in the oppositions and
attempted to rectify this by filing the affidavit of an expert in
the field of Chinese language studies. The expert arrived at
different conclusions from that of the opponent's expert.
Additional evidence can be filed on this type of appeal.
The Applicant's Expert
To ensure that expert witnesses understand their independent
advisory role to the court, a Code of Conduct for Expert Witnesses
was added as a Schedule to the Federal Courts Rules. The
Code of Conduct emphasizes that an expert witness has an overriding
duty to assist the court impartially on matters relevant to his or
her area of expertise. The Code specifically states that the expert
must be independent and objective, and is not an advocate for a
The Rules require counsel to provide an expert witness
with a copy of a Code of Conduct and to file a certificate signed
by the expert, acknowledging that the expert agrees to be bound by
the Code of Conduct.
Unfortunately counsel for the applicant did not provide the
expert witness with a copy of the Code of Conduct and failed to
file a certificate signed by the expert, acknowledging that the
expert agreed to be bound by the Code of Conduct.
When counsel for the respondent objected to the applicant's
evidence on this basis the judge found the affidavit of the expert
to be inadmissible.
The Standard for Review
If new evidence is filed that was not before the board, 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, if the new evidence is significant and would materially
affect the underlying decision. However, where no new significant
evidence is added on appeal, the standard of review is
reasonableness and considerable deference is given to the decision
Since the applicant's evidence was not admissible the
standard of review was reasonableness. The judge reviewed the
evidence and arguments in detail but was not convinced that the
decisions in issue were unreasonable or incorrect in any way.
The decision will cause counsel in actions in the Federal Court
to ensure that the requirements of the Rule concerning
expert witnesses are satisfied.
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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