A recent decision of the Federal Court provides a
reminder of the correct approach to be followed concerning appeals
from the Trade Mark Opposition Board.
Compass Minerals Canada Corp (Compass) filed an application for
the trade mark ENVIRO GUARD based on proposed use in association
with "de icing and ice prevention preparations for roadways
and sidewalks and other paved surfaces".
Tiger Calcium Services Inc. (Tiger) opposed the application on
the basis, among others, that the applied for mark was not
registrable, Compass was not entitled to the mark and the mark was
not distinctive since the mark was confusing with the registered
trade-marks CLEAR GUARD, ROAD GUARD PLUS, and NANUK ENVIRO
NON/CHLORIDE owned by Tiger for use in association with similar
Unsurprisingly the Trade Mark Opposition Board dismissed
Tiger's opposition on the basis that the marks in issue were
not confusing. The parties' marks were relatively weak marks,
the respective channels of trade were different, and the
parties' marks were more different than alike in each of the
three facets of resemblance.
Tiger appealed from this decision to The Federal Court. Tiger
filed a significant volume of new evidence. The new evidence
included evidence of the use of an additional mark that had not
been mentioned in the statement of opposition. Based on this
evidence Tiger argued they owned a family of marks all of which
ended with the "guard".
The judge referred to a previous decision of the Court of Appeal
that confirmed that even though there is an express appeal
provision in the Trademarks Act to the Federal Court, expertise on
the part of the Board has been recognized as requiring some
deference. Having regard to the Board's expertise, in the
absence of additional evidence adduced in the Federal Court,
decisions of the Board, whether of fact, law or discretion, within
its area of expertise, are to be reviewed on a standard of
reasonableness. However, where additional evidence is presented in
the Federal Court that would have materially affected the
Board's findings of fact or the exercise of its discretion, the
judge must come to his or her own conclusion as to the correctness
of the Board's decision.
In addition, it is clear that while new evidence can be
considered on appeal, the Federal Court has no jurisdiction to
consider new issues not raised before the Board.
The judge found that while the additional evidence was
voluminous, it was largely repetitive of the original record, and
would not have materially changed the findings of the Board.
Accordingly, the appropriate standard of review was reasonableness.
In addition, the judge refused to consider the evidence of use of
the additional mark.
The Board's consideration of the evidence and reasons
articulated in its decision were reasonable and as a result the
appeal was dismissed.
When consideration is being given to an appeal from the Board
the ability to present new evidence which is material is a key
consideration as it will change the standard of review. If the
argument or the ground of opposition was not raised before the
Board the court will not likely consider it.
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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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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