This month we are discussing basic points concerning the evidence to be filed. An opposition is like a proceeding in a court and many issues can arise concerning the evidence filed.
When considering the evidence required, the grounds of opposition and the dates at which each ground will be determined are the starting point.
As well the Trademarks Act states that the right of an applicant to secure a registration is not affected by the previous use or making known of a mark of another if the mark was abandoned at the date of the advertisement of the applicant’s application. An opponent who wishes to rely on previous use of its mark(s) must show such previous use and that it had not abandoned the use of its mark(s) on the date the advertisement of the applicant’s application. The provision is based on abandonment and is not determined solely by the fact that the opponent may have stopped use of its mark.
All evidence, except for certified copies, must be presented by affidavit or statutory declaration, which are filed with the Trademarks Opposition Board. It is also prudent to make sure such material complies with the Federal Court Rules.
Statements made in an affidavit based on information and belief are prima facie inadmissible hearsay unless they satisfy the criteria of necessity and reliability. However, the Board will generally accept the reliability of evidence given by individuals who run businesses or are corporate officers even if they have made enquiries of others or reviewed documents. These individuals are presumed to have personal knowledge about the workings of their businesses, because of their experience and position.
Evidence of customer awareness or reach into the marketplace through a website or social media presence can be used to show acquired distinctiveness. This can be done by presenting evidence relating to the number of visits or activity by consumers on the relevant website or social media platforms.
The evidence of the state of the register may be presented by submitting the affidavit of a knowledgeable individual, who has downloaded and copied relevant pages from the CIPO website. Frequently evidence of the use of these marks is required.
By way of analogy to the Federal Court Rules translations of documents in a foreign language will be admissible only when accompanied by an affidavit attesting to the accuracy of the translation.
The evidence of experts may be filed but this evidence must be relevant, necessary to assist the Hearing Officer, not subject to any exclusionary rule and from a properly qualified expert.
The Board will generally give no weight to statements made by non-expert individuals that constitute opinion evidence on issues that go to the merits of the opposition.
At any time before notice requiring filing of argument, the Registrar may, on the application of any party and on such terms as may be directed, order the cross examination under oath of any affiant or declarant on their affidavit or declaration. If an affiant or declarant fails to attend for cross examination, the affidavit or declaration shall not be part of the evidence. The ambit of questioning on the cross-examination can go beyond the four corners of the affidavit itself but the questions must relate to issues that are relevant to the opposition.
More comments concerning the evidence to be filed will follow.
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.
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