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.


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.

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John McKeown
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