Ebox Inc. (the Applicant) applied for the trademark EBOX TV (the Mark) based on proposed use in Canada in association with services consisting of providing internet access, internet telephony, web hosting, and assistance and troubleshooting in the event of network failures.
An individual opposed the application on the grounds that the Applicant was not the person entitled to registration of the Applicant’s Mark in association with the Applicant’s Services since at the filing date of the Application:
a) the Applicant’s Mark was confusing with the Opponent’s IBOX TV TM Trademark that was previously used in Canada, and is still in use, in association with the Opponent’s Goods and Services.
b) the Applicant’s Mark was confusing with the Opponent’s IBOX TV TM tradename that was previously used in Canada, and is still in use, in association with the Opponent’s Goods and Services.
For its statement of opposition, the “Opponent’s Goods and Services” were defined as:
Television set-top boxes and Streaming of audiovisual materials and media content via the Internet, namely television programs, video games, music and films; transmission and dissemination of audiovisual and multimedia content via the Internet, namely television programs, video games, music and films; provision of access, via telecommunications, to films and television programs; Internet television services; subscription television broadcasting; pay television broadcasting; transmission of online television programs; sale of television set-top boxes; television entertainment services, namely entertainment in the form of television programs
The Hearing Officer said it was initially up to the Opponent to determine the merits of his opposition. The grounds for opposition must be duly pleaded and there was an initial evidentiary 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. Once that evidentiary burden has been met, it is up to the Applicant to establish, on a balance of probabilities, that no grounds of opposition prevent the registration of the Mark.
The Regulations applicable to oppositions provide that evidence is to be submitted to the Registrar by way of affidavit or statutory declaration. The evidence must be in the form of a sworn document, or a statement made under oath before a Commissioner for Oaths.
To be validly sworn, an affidavit must be signed in the presence of a Commissioner for Oaths and the affiant must be in possession, at the time of signing, of the exhibits that support the affidavit, which the Commissioner must swear in the presence of the affiant.
It appears from the cross-examination of the Opponent, that he stated that he was alone when signing his affidavit and did not remember seeing the Commissioner for Oaths whose signature appears on the affidavit and the supporting exhibits. As a result, the affidavit was not admissible.
The Hearing Officer also said even if the Opponent’s affidavit had been admissible, it would not have changed the outcome of the opposition. Specifically, it was found that the Opponent’s evidence included several inaccurate statements and was not corroborated by the documentary evidence in the exhibits.
The Hearing Officer concluded that the Opponent had not discharged his initial burden to demonstrate that he had used the mark IBOX TV in association with his goods and services before the filing date of the application for the EBOX TV mark, and that he had not abandoned this mark or tradename when the mark was published in the Trademarks Journal.
It was unnecessary to decide whether the EBOX TV mark created confusion with the IBOX TV mark. The Trademark Opposition Board Decision Jean-Louis Vill v Ebox Inc.
The Appeal to the Federal Court
The Opponent appealed to the Federal Court and filed an additional duly sworn affidavit. Shortly thereafter the application was assigned to Bell Canada who obtained leave of the Court to replace Ebox as the respondent.
The Opponent argued that the new evidence was relevant and would have had a significant impact on the Board's decision. As result it was said the Court should proceed by appeal de novo.
The Applicant responded that the new evidence was not relevant and would not have affected the decision. Since only a mixed error of fact and law was raised by the Opponent the applicable standard of review was that of palpable and overriding error.
When the Judge reviewed the new evidence, she concluded it did not affect the Hearing officer’s decision. In addition, even if the Court had conducted a de novo analysis of the evidence, it would have concluded, as the Hearing Officer did, that the Appellant did not meet his initial burden of demonstrating that he had used, in Canada and in the normal course of trade, the trademark IBOX TV in connection with its goods and services, and continued to do so at the time of publication of the Respondent's application for registration. Federal Court Decision - Vill c. Bell Canada
It is not correct to approach an opposition on the basis that the onus is on the applicant to establish, on the balance of probabilities, that no grounds of opposition prevent the registration of the Mark. As illustrated by these decisions there is an initial evidentiary burden on the Opponent to adduce sufficient admissible evidence from which it can reasonably be concluded that the facts alleged to support each ground of opposition exist. The necessary evidence must exist and be appropriately presented in the opposition.
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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.