The Applicant applied to register the trademark Divert NS (the Mark) in association with various services related to waste diversion and recycling. The application was based on use of the Mark in Canada since at least as early as May 16, 2016. The Opponent opposed the application, alleging, among other grounds, that the Applicant had not used the Mark in Canada since the date claimed in the application contrary to subsection 30(b) of the Trademarks Act. Divert, Inc. v. Resource Recovery Fund Board Inc. 2021 TMOB, 2022 FC 1650
The Applicant’s evidence included an affidavit that tracked the Applicant’s rebranding of the Mark beginning in January 2016. One of the documents referred to in the timeline was an email dated May 17, 2016, to the Applicant’s stakeholder list announcing the Applicant’s rebranding under the Mark, and an email to all Applicant staff informing them of the official branding change and the new landing page for the Applicant’s website.
The Onus
The Applicant bears the legal onus of establishing, on a balance of probabilities, that its application complies with the requirements of the Act. However, there is an initial evidential burden on the Opponent to adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support each ground of opposition exist.
The Decision of the Trademarks Opposition Board
The Opponent did not file any evidence which called that claimed date of first use into question. As a result, the Applicant was not obliged to submit any evidence to substantiate its claimed date of use in order to succeed on the section 30(b) ground.
The Hearing Officer said an opponent’s initial burden under section 30(b) is light and can be met by reference not only to the opponent's evidence but also to the applicant’s evidence. However, an opponent may only successfully rely upon the applicant’s evidence to meet its initial burden if the opponent shows that the applicant’s evidence puts into issue the claim in the application.
The Opponent relied on the fact that the official launch of the new landing page for the Applicant’s website took place on Tuesday, May 17, 2016 - one day after the date of use claimed in the application. However, the Hearing Officer did not consider this sufficient for the Opponent to meet its initial evidential burden under section 30(b). First, none of the services in the application were limited to being provided online, and he was not prepared to assume that the first use of the Mark by the Applicant would have been via its website. Second, given the statement in the Applicant’s affidavit that the Applicant has used the Mark in Canada since at least as early as May 16, 2016, and given the evidence regarding the Applicant’s development and testing of the Mark in the months leading up to that date, he was not prepared to assume that no use of the Mark took place before May 17, 2016. The Affidavit was not clearly inconsistent with the May 16, 2016 claimed date of first use.
As a result, this ground of opposition was rejected.
The Appeal
The Opponent appealed to the Federal Court. Since no new evidence was filed the appellate standards of review apply. The Court applies the correctness standard on issues of law, but only interferes with findings of fact—or of mixed fact and law where there is no extricable question of law—if the Hearing Officer has made a palpable and overriding error.
The Opponent argued the Hearing Officer erred in applying the wrong test under subsection 30(b) and the application of the onus. The Judge concluded that each argument was based on the evidence before the Hearing Officer, rather than a misstatement of the applicable law or any extricable legal error. The palpable and overriding error standard applied.
The Judge accepted that the relevant principles applicable to the subsection 30(b) ground were:
(i) the relevant date is the filing date of the application; (ii) an opponent has an initial evidential burden to establish the facts supporting its allegation regarding the claimed date of first use; (iii) where the facts are more readily available to the applicant, the opponent’s evidential burden is less onerous; (iv) this burden can be met by relying on the applicant’s evidence; (v) to meet the burden by relying on the applicant’s evidence, the opponent must show the evidence is “clearly inconsistent or puts into issue the claims in the applicant’s application”; and (vi) the applicant is under no obligation to evidence its claimed date of first use if this date is not first put into issue by an opponent meeting its evidential burden.
The Judge found that the Hearing Officer had appropriately applied these principles.
The Opponent argued there was a clear inconsistency between the Applicant’s evidence and the claimed date of first use. The Hearing Officer found that such an inference relied on the assumption that the company’s first use was a website use, and he was not prepared to make that assumption. This approach was open to the Hearing Officer who did not misunderstand or misstate its role in assessing the evidence.
As the Opponent did not identify an error of law or show that the Hearing Officer made a palpable and overriding error in his findings of fact or mixed fact and law the appeal was dismissed.
Comment
Several things make this decision odd. First, under the Act before June 17, 2019, there was no obligation to state a date of first use with complete precision and it could have been stated as “as least as early as”. There is no obligation to specify a date of first use under the current Act.
Second, the Applicant was not required to submit any evidence to substantiate its claimed date of use to succeed on the section 30(b) ground of opposition.
Third, the palpable and overriding error. standard of review applied which is highly deferential.
This ground of opposition was removed from the Act by the 2014 amendments, but the same principles continue to apply.
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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.