A recent decision of the Federal Court emphasizes the importance of ensuring that expert witnesses understand their independent advisory role to the Court.
The Applicant’s Marks
The applicant applied to register two trade mark applications which were primarily made up of Chinese characters. The applications were based on proposed use in association with bakery type goods, among others.
The Oppositions
The opponent opposed the applications on the basis that the applied for marks were confusing with the two registered trade marks owned by it which were also primarily made up of Chinese characters.
The opponent filed evidence in the oppositions which included an affidavit of an expert in the field of Chinese language studies. She acknowledged that the applicant’s Chinese characters were written in a different script style as compared to those in the opponent’s mark. However she said that despite this difference that the majority of the Chinese characters of the applications and the first two Chinese characters of the opponent’s mark would be read the same, would sound the same and would be translated into the same English word(s), irrespective of the differing script styles. The difference would be akin to a person reading and understanding English language text in Arial font, as compared to Times New Roman font.
The Hearing Officer’s Decisions
The hearing officer concluded that this was a situation in which it would be appropriate to consider the impression of the average Canadian consumer who reads and understands Chinese characters when determining the likelihood of confusion between the parties’ marks.
The hearing officer concluded that when all of the surrounding circumstances were considered, in particular the overlap in the nature of the parties’ wares and trade and the similarities in sound, appearance, and ideas suggested, she was not satisfied that the applicant has discharged its burden of showing, on a balance of probabilities, that there is no reasonable likelihood of confusion between the applied for marks and the opponent’s trade marks with respect to bakery type goods.
The Appeal
The applicant did not file any evidence in the oppositions and attempted to rectify this by filing the affidavit of an expert in the field of Chinese language studies. The expert arrived at different conclusions from that of the opponent’s expert. Additional evidence can be filed on this type of appeal.
The Applicant’s Expert
To ensure that expert witnesses understand their independent advisory role to the court, a Code of Conduct for Expert Witnesses was added as a Schedule to the Federal Courts Rules. The Code of Conduct emphasizes that an expert witness has an overriding duty to assist the court impartially on matters relevant to his or her area of expertise. The Code specifically states that the expert must be independent and objective, and is not an advocate for a party.
The Rules require counsel to provide an expert witness with a copy of a Code of Conduct and to file a certificate signed by the expert, acknowledging that the expert agrees to be bound by the Code of Conduct.
Unfortunately counsel for the applicant did not provide the expert witness with a copy of the Code of Conduct and failed to file a certificate signed by the expert, acknowledging that the expert agreed to be bound by the Code of Conduct.
When counsel for the respondent objected to the applicant’s evidence on this basis the judge found the affidavit of the expert to be inadmissible.
The Standard for Review
If new evidence is filed that was not before the board, 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, if the new evidence is significant and would materially affect the underlying decision. However, where no new significant evidence is added on appeal, the standard of review is reasonableness and considerable deference is given to the decision below.
Since the applicant’s evidence was not admissible the standard of review was reasonableness. The judge reviewed the evidence and arguments in detail but was not convinced that the decisions in issue were unreasonable or incorrect in any way.
Comment
The decision will cause counsel in actions in the Federal Court to ensure that the requirements of the Rule concerning expert witnesses are satisfied.