A recent decision of a judge of the Federal Court allowed an appeal from a decision of the Hearing Officer of the Trademark Opposition Board, who had allowed an amendment to be made to the statement of opposition at the hearing of the opposition.
The Facts The opponent’s statement of opposition referred to an incorrect subsection number of the Trademarks Act dealing with entitlement to a mark. The statement of opposition referred to subsection 16(3) which provides that entitlement is determined as of the date of filing of the application in issue. The opponent sought leave to amend to refer to subsection 16(1) which provides that entitlement is determined as of the date of first use of the applied-for mark.
The Practice Notice in Trade-mark Opposition Proceedings sets out the matters to be considered in determining if leave to amend a statement of opposition should be granted. They are:
the stage the opposition has reached;
why the amendment was not made earlier;
the importance of the amendment; and
the prejudice suffered by the other party.
The Hearing Officer had the benefit of seeing or at least hearing the respective parties make their submissions on this point. As summarized by the Judge the Hearing Officer balanced the four criteria as follows: (1) the leave to amend was requested at a late stage of the proceeding; (2) no explanation has been provided as to why the amendment was not made earlier; (3) the amendment was important; and (4) the prejudice that the applicant would suffer was minimal because the applicant was aware of the opponent’s intention to plead subsection 16(1). The Hearing Officer added that opponent intended to rely on subsection 16(1) of the Act and that the reference to subsection 16(3) was merely a typographical error. He concluded that the effect of the last two criteria outweighed the adverse effect on the opponent of the first two and granted leave to amend the statement of opposition.
The Hearing Officer rejected all of the grounds of opposition with the exception of a ground-based on subsection 16(1). As a result, the application was refused.
The Appeal The applicant appealed to the Federal Court on several grounds, including that the Hearing Officer should not have allowed the amendment. The standard of review to be applied to this type to this ground is “reasonableness”.
The Judge allowed the appeal solely because the Hearing officer should have refused leave to amend. First, the opponent sought the amendment only after the hearing began, and the applicant was not given additional time. Second, the opponent offered no explanation, not even inadvertence. Finally, contrary to the Hearing Officer’s conclusion, it did not appear “clear” that the applicant knew that opponent intended to plead subsection 16(1) of the Act despite its references to subsection 16(3).” The opponent’s error did not appear to be “merely a typographical error” as the Board concluded. As a result, the appeal was allowed, and the matter returned to the Board for a new determination.
The Federal Court of Appeal has recently commented on the application of the reasonable standard. A judge reviewing a decision of a Hearing Officer under reasonableness standard should not reassess the evidence and substitute his or her own appreciation of the evidence for that of the Hearing Officer. That would amount to applying the correctness and not the reasonableness standard: Rather, the question for the Federal Court is whether the Hearing Officer’s decision, taken as a whole in the context of the record, was unreasonable.
Reasonableness is a genuinely deferential standard based on the idea that there may be multiple valid answers to a legal dispute and that a court should not interfere where the Hearing Officer’s decision is rationally supported. A decision is not unreasonable because the evidence would support another conclusion. The Hearing Officer is entitled to deference regarding both findings of fact and inferences of fact.
Comment It seems questionable whether the “reasonableness” standard was applied in the manner specified by the Federal Court of Appeal. The Hearing Officer, with significant experience in such matters, considered the request in a detailed and rational fashion and exercised his discretion to allow the amendment. In addition, nothing is said about the fact that the Hearing Officer saw or at least heard the parties when the request was made as opposed to an appeal based on a written record.
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: firstname.lastname@example.org
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