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What is a Palpable and Overriding Error?

A decision of the Federal Court deals with the standard of review applicable to an appeal from the Trademarks Opposition Board.

Vivo Mobile Communication Co., Ltd. v. Garmin Switzerland GmbH 2022 FC 1410

The Facts

The Applicant applied for the trademark VIVO design, (the Mark), as shown below

in association with “telephone apparatus, specifically telephones, portable telephones, mobile telephones, cellular telephones, and smartphones”.

The Respondent opposed the application on the basis, among others, that the Mark was not registrable because there was a reasonable likelihood of confusion with the Respondent’s VIVOFIT and VIVOSMART trademarks registered (the Respondent’s Marks) in association with:

“monitoring devices for medical and non-medical purposes, namely, electronic monitor that monitors, records and displays physical activity levels, physical inactivity periods, steps walked or ran, distances covered in exercise, exercise levels achieved compared with exercise levels goals, calories burned, exercise goal levels based on past exercise, quality of rest and sleep patterns”.

The Trademarks Opposition Board

The Board refused the application because the Applicant failed to establish, on a balance of probabilities, that there was no reasonable likelihood of confusion between the Mark and Respondent’s Marks.

The Hearing Officer said both the Mark and Respondent’s Marks possessed a high degree of inherent distinctiveness because the word “VIVO” had no connotation to the respective goods, although it found the inherent distinctiveness of the Respondent’s Marks was diminished because the suffix components FIT and SMART which describe features of the Respondent’s monitors. Respondent’s Marks were known to a greater extent and had been used longer than the Mark. There was a strong connection between the parties’ goods and a potential for overlap between the channels of trade; and a high degree of resemblance between the respective marks in appearance and sound, which was not affected by the suffix components of the Respondent’s Marks or the stylization of the Mark.

The Appeal to the Federal Court

The Applicant appealed to the Federal Court and filed additional affidavit evidence. The evidence set out the background of the Applicant and its business, including evidence relating to the use and the reputation of the Mark in Asia and Europe in association with smartphones. It also spoke to the alleged co-existence of the Mark and the Respondent’s Marks in Asia and Europe, how the Applicant makes smartphones available to the public in Africa, Asia and Europe, and the intended distribution of its phones in Canada.

The standard of review for appeals of this nature is the appellate standard of review. For questions of mixed fact and law the standard is palpable and overriding error, for questions of law, the standard is correctness. Palpable means an obvious error, while an overriding error affects the decision-maker’s conclusion. Palpable and overriding error is a highly deferential standard of review, while the correctness standard gives no deference to the underlying decision-maker.

Where additional evidence is filed, the Court must first consider the materiality of the evidence and determine whether the evidence is sufficiently substantial, significant and probative that it would have a material impact on the Board’s decision. If evidence is material, the Court reviews that portion of the decision to which the evidence applies on a correctness standard and makes its own determination based on the whole of the evidence. The Court is not limited to finding a reviewable error in the Board’s decision and the appeal is in a hearing “de novo” with the benefit of the additional evidence. Here the Court concluded the additional evidence was not material.

The Court said that the Applicant must demonstrate an error that is both obvious and critical to the outcome of the proceeding. A careful review was made of the Hearing Officer’s conclusions concerning inherent distinctiveness, the nature of the respective goods and channels of trade and the degree of resemblance. Applicant failed to demonstrate any palpable and overriding errors and the appeal was dismissed.


This decision illustrates the correct application of the palpable and overriding error standard for questions of mixed fact and law. The issue is not whether the Judge agrees with the result or would have decided the case in a different manner but whether a palpable and overriding error was made. Deference is appropriate since Hearing Officers are highly specialized and decide many oppositions. A different approach is justified where material new evidence is filed or there are errors of law.

Toronto, October 2022

If you have questions, please contact me at

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


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.

A version of this article originally appeared in the Lawyer’s Daily published by LexisNexis Canada Inc.

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