Canada: What Effect Do Previous Decisions Of The Trade-Marks Opposition Board Have In Pending Oppositions?

Last Updated: July 25 2018
Article by John McKeown

A recent decision of the Court of Justice for the European Union has confirmed that the hearing body in an opposition must take into account the previous decisions relating to the trademarks relied upon by the opponent and if it departs from the approach adopted in those decisions it must provide an explicit statement of its reasoning for that departure.

The Facts

Gemma Group filed a trademark application for an EU trade mark at EUIPO the following figurative sign in blue:

The goods in respect of which registration was sought were in Class 7 of the Nice Agreement consisting of '"Machines for processing of wood; Machines for processing aluminium; Machines for treatment of PVC".

When the application was advertised Puma SE filed a notice of opposition to registration of the mark applied for. Puma SE relied on two previously registered trademarks owned by it. The trademarks it relied on are reproduced below:

The goods of the registrations are in Classes 18, 25 and 28 broadly consisting of clothing, footwear, headgear and sports articles. Among other things Puma SE relied on the reputation associated with its marks.

In support of the opposition Puma SE referred to three previous decisions of the EUIPO Opposition Division all of which had found that in the light of the extensive evidence provided by Puma SE, the Puma registrations had acquired a substantial reputation through use in the European Union, in respect of clothing, footwear, headgear and sports articles.

The Opposition Division

On 10 March 2014, the EUIPO Opposition Division rejected Puma SE's opposition in its entirety. It was said that while there was a certain degree of similarity between the respective trademarks, the relevant public would not think there was a link between the marks in issue due to the differences between the goods covered by each of those marks. In addition, the Division said that it was not necessary to examine the evidence filed by Puma SE showing the extensive use and reputation of its trademark.

The General Court

Puma SE appealed to the General Court of the EU.

On the appeal the court stated that the Court of Justice has consistently held that, in accordance with the principles of equal treatment and sound administration, a hearing body of the Division is required to take into account previous decisions concerning similar applications and to consider with especial care whether it should decide in the same way or not.

In three previous decisions dated August 20, 2010, August 30, 2010 and May 30, 2011 hearing bodies of the Division concluded that the Puma SE marks had a reputation and were widely known to the public. The decisions, which were duly relied on by Puma in the proceedings were nonetheless not examined or even mentioned in the decision in issue, as it was stated that a hearing body was not bound by previous decision-making practice.

The court said that the strength of the earlier trademarks' reputation had to be taken into account in the overall assessment of the facts in the opposition. The failure to do so was an error in law which could have had a decisive influence on the outcome of the opposition, and the court annulled the decision.

The Court of Justice for the European Union

An appeal was taken from the decision of the General Court to the CJEU. It was argued the General Court's approach to the three previous decisions was in error.

The CJEU said that contrary to the appellants claim, there was no error in law on the part of the General Court concerning its interpretation of the relevant principles. Hearing bodies of the Division are not automatically bound by their previous decisions. The examination of a trademark application must be rigorous and without omission in order to prevent trademarks from being improperly registered. Such an examination includes considering the existence of reputation based on the factual circumstances of each individual case. However, those bodies are not relieved of their obligations arising from the principles of sound administration and equal treatment, including the obligation to state reasons.

In accordance with established case-law the hearing body was required to take into account the three previous decisions relied on by Puma SE, and if it departed from the approach adopted in those decisions it was incumbent on the hearing body, to provide an explicit statement of its reasoning for that departure.

The Canadian Position

The determination of whether two trademarks are confusing involves the application of the statutory factors set out in the Trademarks Act at a specific time. Because of this like the EU the Trade mark Opposition Board is not bound by its previous decisions. However, the Act states that Board must have regard to all of the surrounding circumstances including the statutory factors. The fact that there are previous decisions involving the marks in issue in an opposition is generally a surrounding circumstance which should be considered by the Board.

It has also been said that because the Board is an administrative tribunal that the doctrine of res judicata should not apply to opposition board decisions. However, some hearing officers consider that they are obliged by the principle of comity to follow previous board decisions unless it is considered that they were clearly wrong.

It is less clear whether there is an obligation on the Trademarks Opposition Board to provide an explicit statement of its reasoning for a departure from a previous decision. However on appeal the reasonableness standard of review is concerned with the existence of justification, transparency and intelligibility within the decision-making process. A decision that does not provide such an explanation may not withstand such a review.

Comment

When one hearing officer of the Trademarks Opposition Board decides to not follow the reasoning of another hearing officer in a similar situation it makes sense that an explanation should be provided.

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
John McKeown
 
In association with
Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions