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How to Deal with a Suspect Ground of Opposition?

The Federal Court and the Trademarks Opposition Board have taken a non-technical approach to considering the scope of a ground of opposition.101217990 Saskatchewan Ltd. (District Brewing Company) v. Lost Craft Inc. 2022 FC 125


The Facts

The Applicant applied to register the trademark FIND YOUR CRAFT in association with beer. The Respondent opposed the application. The Respondent asserted that the Applicant was not entitled to registration of the mark because the proposed trademark was confusing with a trademark previously used by the Respondent in association with beer. The Respondent’s evidence was that that the trademark “Find Your Craft” was used by placing it on its delivery van on August 10, 2016.


The Trademark Opposition Board

The Board accepted the Respondent’s evidence that the trademark “Find Your Craft” was displayed on its delivery van on August 10, 2016. It also found it reasonable to assume that the van was driven after that date, thus advertising Respondent’s brewery services. The Board noted that the lack of evidence of the precise locations where the vehicle was used did not detract from its finding, although it might affect the distinctiveness of the trademark.

The Board allowed Respondent’s opposition and dismissed the application for registration. According to the Board, Respondent offered no valid evidence of its use of the trademark “Find Your Craft” in association with beer before the date of filing. But the Board found that Respondent used the “Find Your Craft” trademark in association with “brewery services,” because it was featured on its delivery van starting in early August 2016.

Although the statement of opposition referred only to “beer” and not “brewery services,” the Board noted that Respondent’s evidence and submissions referred to both, and that the Applicant understood the case to meet. As the marks were identical and there was a clear overlap between the Applicant’s beer and the Respondent’s brewery services, the Board had no difficulty finding there was a reasonable likelihood of confusion between the parties’ marks.


The Appeal


The Standard of Review

Absent new material evidence, for questions of law, the standard is correctness. For questions of fact or mixed law and fact, the Court will intervene only if the Board made a palpable and overriding error.


A Ground of Opposition that was not Pleaded

The Appellant argued that the Board erred since it’s consideration of the Respondent’s use of its trademark in association with brewery services amounted to allowing a new ground of opposition which was not pleaded.

Parties are usually not allowed to present evidence or make submissions pertaining to matters not pleaded. But this requirement, aimed at ensuring the fairness and efficiency of the process, should not be applied in a rigid manner. A decision-maker may show flexibility in allowing a party to raise an issue outside a literal reading of the pleadings, provided that no unfairness results.

A statement of opposition must set out the grounds of opposition in sufficient detail to enable the applicant to reply to the ground. An opponent cannot argue a ground that was not pleaded in the statement of opposition: A ground of opposition is defined mainly by reference to the section of the Trademarks Act that is relied upon and, where applicable, the trademark with which the challenged trademark is alleged to be confusing.

The Respondent’s opposition was based on subsection 16(3)(a) and a likelihood of confusion with the “Find Your Craft” trademark used by it. These two essential matters did not change when the Respondent asserted that its trademark was used in association with brewery services, in addition to beer. The fact that the Respondent’s statement of opposition provided the further detail that the mark was used in association with beer did not mean that enlarging the scope of the alleged use to include brewery services constituted a new ground of opposition.

The Applicant knew respondent was relying on the use of its trademark in association with brewery services. The fact that the Applicant chose to raise an objection instead of responding on the merits is immaterial.


The Respondent’s Use of its Trademark

The Board accepted the Respondent’s evidence that the trademark “Find Your Craft” was applied to its delivery van on August 10, 2016. It also found it reasonable to assume that the van was driven after that date, which was advertising of brewery services. The Board noted that the lack of evidence of the precise locations where the vehicle was used did not detract from its finding, although it might affect the distinctiveness of the trademark.

The Court found that the Board did not err in making this finding. The Board did not have to find extensive use to support the ground of opposition set out in section 16(3)(a). Based on the evidence filed, it was open to the Board to find that the trademark “Find Your Craft” was affixed to the van on August 10, 2016. It was equally open to the Board to infer that the van was used for its intended purposes between that date and the date of filing, September 8, 2016.


The appeal was dismissed.


Comment

When a ground of opposition is not properly pleaded, the Board can refuse to consider it. However, in making its determination at the hearing stage the Board must consider the evidence filed as well as the statement of opposition. An Applicant should be cautious in taking an overly technical approach.

Toronto, September 2022


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 general in nature and not intended to provide legal advice as

individual situations will differ and should be discussed with a lawyer.

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