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An Opponent Needs to Carefully Consider the Evidence to be filed with the Trademark Opposition Board

It can be difficult to determine what evidence to file to support the opposition. At an early stage, the issues may be difficult to isolate, but the statutory framework is in the process of changing, and this adds additional consideration.


The Facts

On July 16, 2013, the Applicant filed a Canadian trademark application, based on proposed use in Canada, for the trademark NATERA in association with food and drink products (hemp products, snack food, salad dressings, yogurt, bakery items, etc.), nutritional supplements, protein shakes and additives, and pet food.


On April 21, 2015, the Opponent filed a trademark application to register the trademark NATIERRA based on claimed use of the mark in Canada since August 2010 in Canada in association with canned and bottled fruits, fruit and mixed fruit/nut snacks, candy, spreads, fruit juices and drinks.


The Opposition

The Opponent opposed the Application on the grounds that.

(1) the Applicant was not the person entitled to register the NATERA mark because, at the date of filing of the application, it was confusing with the NATIERRA mark, which the Opponent had previously and continuously used in Canada relying on para. 16(3)(a) and subs. 16(5) of the Act; and


(2) the NATERA mark was not distinctive, having regard to the NATIERRA mark relying on section 2 of the Act).


The evidence relied on by the Opponent was deficient, and the Hearing officer found that a single invoice from August 2010 was no evidence of use of the NATIERRA mark in Canada by the Opponent in association with its goods.


The Hearing Officer also concluded the Opponent had failed to meet its evidentiary burden of showing that its NATIERRA mark had become sufficiently known in Canada as of June 8, 2015, to negate the distinctiveness of the NATERA Mark.


The Appeal

The Opponent appealed to the Federal Court. Subsection 56(5) of the Trademarks Act permits the parties to an appeal to file new evidence. Where a party does so, and the new evidence is “sufficiently substantial and significant,” the Court may exercise any discretion vested in the Registrar. The appeal becomes an appeal de novo to which the correctness standard of review applies. In such a case, the Court accords no deference to the conclusions of the Hearing Officer.


The Opponent’s new evidence addressed the Hearing Officer’s finding it had provided no evidence regarding its normal course of trade for NATIERRA products in Canada and no evidence of the volume or dollar value of sales of NATIERRA products in Canada from which a normal course of trading could be inferred. The new evidence also provided evidence of the Opponent’s Canadian packaging, which used the NATIERRA mark. The correlation of the evidence provided by the affidavit to the Hearing Officer’s concerns, considering the sparse content of the Opponent’s original evidence in the record, lead to the conclusion that the new evidence substantively enhances the record. The Judge undertook a de novo review of the evidence to determine whether the Hearing Officer was correct or whether the opposition should succeed without deference to the Hearing Officer’s findings.[1]


The new evidence established the Opponent’s use of the NATIERRA mark in Canada in the normal course of a trade before July 16, 2013, the date of filing of the Application, and its non-abandonment of the NATIERRA mark as of April 22, 2015, the date of advertisement of the Application.


The Judge also concluded that the first impression in the mind of the hurried grocery shopper for the products at issue would likely be that the NATERA mark and NATIERRA mark were very similar and that the products in question were products from the same source. The shopper would not distinguish the marks. The significant resemblance between the NATERA and NATIERRA Marks would likely confuse such a shopper who would not examine the similarities and differences between the two marks closely. The shopper would expect to see Applicant’s and the Opponent’s food products in the same type of retail establishment and in overlapping locations in the store.


The NATERA mark was confusing with the NATIERRA mark at the date of filing of the Application. The opposition to registration of the NATERA mark under paragraphs 38(2)(c) and 16(3)(a) of the Act succeeded.


The Opponent’s NATIERRA mark was also sufficiently known in Canada as of June 8, 2015, the date of filing of the opposition, to negate the distinctiveness of the NATERA mark. The opposition to registration of the NATERA mark succeeded as well under paragraph 38(2)(d) and section 2 of the Act.


Comment

The concept of testing the water at the Opposition stage is well established. If things don’t go well and additional evidence is available, an appeal is made to the Federal Court. This offers flexibility to counsel and can help to control costs from the client’s viewpoint.


Unfortunately, CIPO did not support this approach and clarified that they expect parties to present all the necessary evidence before the Opposition Board. They caused an amendment to be made to subsection 56(5) to require an appellant to seek leave from the court to adduce evidence in addition to that adduced before the Board. However, while the amendment was passed, it has not been brought into force. It also remains to be seen the grounds under which leave would be granted.


This amendment and other related amendments have not been brought into force, presumably because of covid concerns and the existence of the current minority government.

Parties involved in opposition proceedings should carefully monitor this issue to avoid any unpleasant surprises.


If you have questions, please contact me at mckeown@gsnh.com.


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.


A version of this article originally appeared on the Lawyer’s Daily website published by LexisNexis Canada Inc.


[1]. Brandstorm, Inc. v. Naturally Splendid Enterprises Ltd. 2021 FC 73 https://decisions.fct-cf.gc.ca/fc-cf/decisions/en/item/491728/index.do?q=Natera

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