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| John McKeown |
Facts
The applicant filed a trademark application for the trademark GALPERTI, in association with the goods that included flanges and other metal products. The date of first use was as early as 1999. The respondent opposed the application based on entitlement and lack of distinctiveness relying on its previous use of the trademark GALPERTI and a design version of the mark.
Trademark Opposition Board
The hearing officer concluded the applicant was not entitled to registration of its mark because it was confusing with the respondent’s GALPERTI trademark used since at least as early as 1991 in Canada, which was before the date of first use claimed in the application. The applicant’s evidence was insufficient to establish an earlier date of first use and the material date remained the last day of 1999, in conformity with the claimed date “since at least as early as 1999” in the application.
Appeal
The applicant filed new evidence to show that it had used the applied-for mark since 1985.
If the new evidence filed is material, it permits the court to conduct a de novo analysis regarding the specific
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The court acts as a court of first instance for the purpose of considering whether newly filed evidence is material. To be material, new evidence must be “sufficiently substantial and significant” and of “probative value”; evidence that merely supplements or repeats existing evidence will not be accepted. Evidence may be“material” when it enhances the overall cogency of the record in a way that may have influenced the hearing officer’s conclusions on a finding of fact or exercise of discretion or fills gaps or remedies a deficiency identified by the hearing officer.
In substance to determine if the new evidence is material or not, the court assesses:
- the nature of the new evidence;
- the significance of the new evidence;
- the probative value of the new evidence; and
- the reliability of the new evidence.
The applicant filed four affidavits to establish it had used the applied-for mark since 1985. The court reviewed the evidence in a detailed fashion and concluded the new evidence was material but emphasized what the legal burden required. The judge said that the effect of subsection 16(1) and s. 30 of the Trademarks Act was to establish a requirement for continuous use of a trademark in the normal course of trade. However, continuous use of a trademark may involve periods of non-use only if such non-use falls outside the normal course of trade. This was a contextual exercise dependent on the facts of each case; it is not a bright-line legal test.
The requirement to show continuous use establishes an initial legal burden on a trademark applicant to show compliance with the Act on the claimed date of first use when making their application. This in turn establishes an evidentiary burden on an opponent to support allegations of non-compliance. However, where a trademark applicant seeks to rely on an earlier date of first use than their initial claimed date of first use, the applicant bears a positive evidentiary burden to show that use.
The applicant’s new evidence on appeal when combined with its evidence before the board established continuous use of its GALPERTI trademark in the normal course of trade from early 1986 through the 1990s. This was before the respondent’s use in 1991 and the applicant was entitled to register its mark.
Comment
The facts of this case, which was decided under the previous version of the Trademarks Act, are unsettling since the opponent’s registration could be in jeopardy because of the decision.
Under the current Act, things are worse from the opponent’s viewpoint since there is no requirement to state a date of first use. Care should be taken to attempt to independently determine entitlement to avoid unpleasant surprises.
John McKeown, counsel at Goldman Sloan Nash & Haber LLP, is certified by the Law Society of Ontario as a specialist in intellectual property law (trademarks/copyright). He is the author of Canadian Intellectual Property Law and Strategy: Trademarks, Copyright and Industrial Designs. He can be reached at mckeown@gsnh.com.
The opinions expressed are those of the author and do not reflect the views of the author’s firm, its clients, Law360 Canada, LexisNexis Canada or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice.
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