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.
The Opposition
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 goods.
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.
The Appeal
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.
Comment
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.
John McKeown
Goldman Sloan Nash & Haber LLP
480 University Avenue, Suite 1600
Toronto, Ontario M5G 1V2
Direct Line: (416) 597-3371
Fax: (416) 597-3370
Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.