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How to Use State of the Register Evidence

A decision of the Federal Court illustrates the impact of state of Register use in opposition proceedings. Mécanique de performance Panthera Motorsports Inc. c. Jaguar Land Rover Limited 2024 CF 764


The Facts


The Opposition

Mecanique de performance Panthera Motorsports Inc. (Panthera]) applied for the trademark shown below (the Panthera Mark):



for use with Motorcycle and off-road vehicle engines, their parts and accessories, excluding sport utility vehicles, light truck and automobile engines, and their parts and accessories and related goods.


Jaguar Land Rover Limited (Jaguar), opposed the application primarily on the basis that the Panthera Mark was confusing with Jaguar's registered trademarks, in particular with the "Leaper" trademarks including the design marks shown below:


Both parties filed evidence and the opposition went on to a hearing. The Hearing Officer found that the Jaguar LEAPER Marks were widely known in Canada in association with Jaguar automobiles. While Panthera filed evidence concerning the state of the trademark register, the evidence was incomplete due to the lack of information concerning whether the marks in issue were in use. The Hearing Officer rejected Panthera’s application.


The Appeal

Panthera filed a new affidavit from the president of Panthera, which concerned the research he carried out to verify the commercial use of images of felines in the vehicle industry class 12 of the Nice classification. Nine exhibits showed images of felines used by ARTIC CAT since at least 2016 and by Dodge (Hellcat) since at least 2015.


Jaguar appeared but filed no evidence and did not attend the hearing of the appeal.

To be considered relevant, new evidence must be sufficiently significant and have probative value. The test is not whether the new evidence would have changed the Hearing Officer's mind, but rather whether it could have had an impact on his decision. If new evidence satisfies this test, appeal proceeds on a de novo basis and requires the application of the correctness standard. However, only the issues which are covered by the new evidence justify a new analysis by the Court, which must draw its own conclusions concerning those issues.


The Judge said in connection with the assessment of distinctive character (paragraph 6(5)(a) of the Act), the evidence showed the use of images of felines was widespread in the sector of products in class 12 of the Nice classification (vehicles) in Canada. The affidavit, accompanied by exhibits, confirms the use of images of felines associated with the well-established brands Dodge and ARCTIC CAT, and their direct link with products in class 12. In addition, numerous trademark registrations contained images of felines in direct association with products in class 12.


It was well established that the presence of a common element in several trademarks has a significant influence on the question of confusion.


Panthera and Jaguar do not operate in the same sector of activity and the markets where the brands will be present are distinct. The simultaneous use of the trademarks in question in the same region could not reasonably lead the relevant consumer to conclude that the goods associated with these trademarks were provided or managed by the same entity.

In light of the new evidence, the Judge concluded that Panthera met its burden and has shown the registration of its Mark is not, on the balance of probabilities, likely to create confusion with Jaguar brands.


Comment

As the decision shows, state of the register evidence is important but it is not always easy to satisfy the requirements relating to its successful use.

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


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 in the Law360 Canada published by LexisNexis Canada Inc.


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