A recent decision of the Federal Court has clarified what an opponent has to prove in the context of an opposition based on lack of distinctiveness of the applied-for mark.
The Facts
The applicant applied for the trade mark LOCAL for use in association with restaurant, bar and lounge services, food take-out services and related bar paraphernalia.
The opponent opposed the application. By the time of the hearing of the opposition, the opposition was limited to the ground that the trade mark applied for was not distinctive because it was not capable of distinguishing the applicant’s services from the services of others, particularly the services of the opponent provided under the trade names LOCAL522 and LOCAL510.
The Trade-marks Opposition Board dismissed the opposition on the basis that the opponent had not made out its case. The opponent appealed to the Federal Court and submitted additional evidence relating to the issue of distinctiveness.
The Appeal
When new evidence is filed on an appeal from the Board that is significant and would materially affect the decision, 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.
The judge summarized the test to be applied where there is an allegation that a reputation of a mark negates the distinctiveness of the applied-for mark as follows:
- The evidential burden lies on the opponent who claims that the reputation of its mark prevents the other party’s mark from being distinctive. However, a burden remains on the applicant to prove that its mark is distinctive;
- A mark should be known in Canada to some extent to negate another mark’s distinctiveness;
- Alternatively, mark can negate another mark’s distinctiveness if it is well known in a specific area of Canada;
- An opponent cannot simply claim that its trade mark is known in Canada, and it must present clear evidence to support its claim;
- The reputation of the mark can be proven by any means;
- The decision-maker must weigh the evidence on a case-by-case basis.
To give effect to the requirement that a mark be known to some extent or well-known as noted above, the courts have also taken the position that the evidence presented to attack distinctiveness must be “substantial, significant and sufficient.”
When the judge reviewed all of the evidence he was not satisfied that the opponent had shown that reputation of its trade names was “substantial, significant or sufficient” and had not satisfied the tests set out above despite having had two opportunities to do so.
Comment
An opponent relying on a ground of opposition based on lack of distinctiveness needs to file evidence to show that the reputation of its trade mark(s) or trade name(s) was, at the relevant date, “substantial, significant or sufficient” in order to negate the distinctiveness of the applied-for mark.
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. © JOHN MCKEOWN