THE STATEMENT OF OPPOSITION: The Crucial First Step in Opposition Proceedings

Cynthia Rowden

Bereskin & Parr LLP September 2009

The author wishes to acknowledge the assistance of Meghan Dillon and Peter Woods and the many students at Bereskin & Parr who have contributed to the

updating of this paper over the years.

© 2009 Bereskin & Parr LLP Bereskin & Parr LLP 40 King Street West, 40th Floor Toronto, Ontario, Canada M5H 3Y2 Phone: 416.364.7311 Fax: 416.361.1398 www.bereskinparr.com

TABLE OF CONTENTS THE STATEMENT OF OPPOSITION: THE CRUCIAL FIRST STEP IN OPPOSITION PROCEEDINGS............................................................................ 3

I INTRODUCTION: A REVIEW OF THE STEPS IN AN OPPOSITION........................................................ 3 II PREPARING THE STATEMENT OF OPPOSITION ............................................................................... 6

1. Selecting the Grounds of Opposition .................................................................................... 6 a) Non-compliance with Section 30......................................................................................................6 i) Section 30(a): Identification of Goods and Services .........................................................................7 ii) Section 30(b) ....................................................................................................................................11

(a) Selecting the Correct Date of First Use .....................................................................................11 (b) Applicant’s or Predecessor’s Use of the Trade-mark................................................................15 (c) Licensee's Use of the Trade-mark..............................................................................................16 (d) Use “as a Trade-mark”................................................................................................................17 (e) Variations in the Trade-mark .......................................................................................................18

(iii) Section 30(d): Improper Reliance On a Foreign Application or Registration..................................19 (a) Variations in the Trade-mark ......................................................................................................20 (b) Use of the Trade-mark by Applicant or Predecessor ................................................................20 (c) Non-compliance with Section 31(1)............................................................................................21

iv) Section 30(e): Improper Reliance Upon “Proposed Use” as a Basis of Application ..................21 v) Section 30(h): Accurately Representing the Trade-mark in the Application ................................24 vi) Section 30(i): Satisfaction of Entitlement to Use the Trade-mark.................................................25

(a) Bad Faith .....................................................................................................................................25 (b) Non-compliance with Federal or Provincial Statutes or Regulations .......................................26

b) Non-registrability ..............................................................................................................................32 i) Section 12(1)(a): Surname of an Individual...................................................................................32 ii) Section 12(1)(b): Clearly Descriptive or Misdescriptive...............................................................34 (a) Composite Marks – Descriptive "When Sounded" ....................................................................35 (b) Combined French and English Marks........................................................................................36 (c) Professional Designations ..........................................................................................................36 iii) Section 12(1)(c): Generic Trade-marks .......................................................................................37 iv) Section 12(1)(d): Confusion .........................................................................................................37 v) Section 12(1)(e)-(j): Prohibited Marks ..........................................................................................39

c) Non-entitlement ................................................................................................................................41 d) Non-distinctiveness..........................................................................................................................43

2) Relevant Dates..................................................................................................................... 44 a) Section 30.........................................................................................................................................44

i) Section 30(a)...................................................................................................................................45 ii) Section 30(b)..................................................................................................................................45 iii) Section 30(e) .................................................................................................................................45 iv) Section 30(i) ..................................................................................................................................45

b) Entitlement .......................................................................................................................................46 c) Registrability .....................................................................................................................................47

i) Section 12(1)(d) ..............................................................................................................................47 ii) Section 12(1)(b) .............................................................................................................................47 iii) Section 12(1)(a) ............................................................................................................................49 iv) Section 12(1)(e) ............................................................................................................................49 v) Sections 12(2) and 14 ...................................................................................................................49

d) Distinctiveness .................................................................................................................................50 3) Pleading all Relevant Grounds ........................................................................................... 51

a) Can Opposition Board Only Decide Opposition on the Basis of Pleadings?................................52 b) Parties Cannot Raise New Grounds of Opposition Except Pursuant to Pleadings .....................52

4) Grounds Must be Pleaded to Sufficiently Permit an Applicant to Reply ............ 53 a) The Grounds of Opposition must be Pleaded Completely ............................................................53 b) Timing for Challenge to Sufficiency of Pleadings...........................................................................53 c) Cases on Sufficiency of Pleadings..................................................................................................55

5) Amending the Statement of Opposition ............................................................................. 58 a) Adding a New Ground of Opposition With Leave of the Registrar................................................58 b) Adding a New Ground of Opposition on Appeal ............................................................................59

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THE STATEMENT OF OPPOSITION: The Crucial First Step in Opposition Proceedings

I Introduction: a Review of the Steps in an Opposition The procedure and rules for opposition are found in the Trade-marks Act, R.S.C. 1985, c. T-13 (the “Act”) (s. 38), in the Trade-marks Regulations, S.O.R./96-195 (the "Regulations") (Rules 35 to 47), and also in Practice Notices issued periodically by the Trade-marks Office. Effective March 31, 2009, a new practice notice was published, and is available at CIPO's website. It has a significant impact on timing in an opposition, and is discussed in greater detail below. An opposition cannot begin until a trade-mark has been advertised for opposition in the Trade-marks Journal, published weekly by the federal government. Once advertised, the opposition must be filed within two months (s. 38(1)/Rule 38), although the opponent may extend that deadline for 3 months upon request. Care should be taken to ensure that extension of time requests are made in a timely fashion, are properly addressed to the attention of the Opposition Board and that the request is received by the Trade-marks Office. Particular care also needs to be taken in calculating deadlines, given the recent amendments to the Regulations, which change some opposition terms for oppositions to applications advertised on or after October 1, 2007. There are, accordingly, two separate sets of deadlines depending on the advertisement date of the application. According to section 38 of the Act, there are four possible grounds of opposition: i) non-compliance with section 30; ii) non-registrability, referring to all of the factors in section 12(1),

including name or surname, descriptiveness, confusion with a registered trade-mark or marks that are contrary to section 9 or 10;

iii) non-entitlement, referring to prior use or making known of a

confusingly similar trade-mark or trade name, or to a confusing trade-mark in a previously filed trade-mark application; and

iv) non-distinctiveness. The statement of opposition is filed with the Opposition Board of the Trade-marks Office, who reviews it to ensure that at least one valid ground of opposition is raised (s. 38(5)). If so, the Registrar will forward the statement of opposition to the applicant, who then has two months (s. 38(6)/Rule 39), which can be

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extended (s. 47(1)), to file a counter statement.1 In most cases, the counter statement is simply a denial of the grounds of opposition. It is important that the counter statement contain a denial of all the grounds of opposition, whether it be a general denial of all the grounds or a specific denial of each ground. This point is highlighted in the recent case of Garbo Group Inc. v. Harriet Brown & Co. [2009] T.M.O.B. No. 27 (February 20, 2009) (T.M.O.B., per Bradbury), where the opponent filed an amended statement of opposition, containing a new ground, after the applicant had filed its counter statement specifically denying each of the grounds contained in the original statement of opposition. The applicant did not file an amended counter statement denying the new ground of opposition, nor did it file any evidence or argument. While the new ground likely succeeded primarily due to the applicant's failure to file any evidence or argument, the Hearing Officer stated at para. 12: "The [new] ground, having been neither denied nor rebutted, succeeds" (emphasis added). The applicant can also challenge the grounds of opposition or the sufficiency of the pleadings, by submitting that the statement of opposition is deficient, in which case the Opposition Board will give the opponent the chance to rectify the pleading issues, or will order that all or certain provisions in the statement of opposition be struck out. This procedure, which is fairly recent, is discussed in greater detail below. Failure of the applicant to file a counter statement will result in the abandonment of the application (s. 38(7.2)). If a counter statement is filed, the opponent may then file and serve its evidence (s. 38(7)/Rule 41). Under the amended Regulations, the opponent has four months (which can be extended) to file evidence in the form of affidavits or statutory declarations or certified copies of Trade-marks Register records. Once filed, the applicant may cross-examine any of the opponent's affiants, and may also file its own evidence (under similar time limits) (s. 38(7)/Rule 42). Cross-examination is available, following a request by the party seeking cross-examination, and pursuant to an order of the Opposition Board (Rule 44(2)). The request will not normally affect the time limits for the next stage in the opposition, unless the request for cross-examination is made within a prescribed period (which differs, depending upon whether the trade-mark was advertised before or after October 1, 2007) and is accompanied by a request for an extension of time. Each party bears its own costs of the cross-examination. Following the completion of the applicant's evidence, the opponent may file evidence in reply, (one month term, which is extendible (s. 38(7)/Rule 43)), and then the parties may each prepare and file written arguments (Rule 46). Written arguments are filed in sealed envelopes with the Trade-marks Office, who will 1 Consult the Practice Notice, entitled "Practice in Trade-mark Opposition Proceedings", effective March 31, 2009.

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then forward a copy to the other party once both have been filed, or the deadline for filing written submissions has passed. Either party has one month to request a hearing once the Registrar has forwarded both parties a notice that they may do so (Rule 46(4)). Only parties who specifically confirm that they intend to attend the hearing and/or make submissions at the hearing can participate in the hearing. A party who does not request a hearing should not assume that if the other party requests the hearing, its representative can attend and/or make submissions. The safe response to a hearing notice should either be to request a hearing, if appropriate, or advise that the party wishes to participate if a hearing is requested by the other party. See, for example, Primo Bedding v. HSM Pressen (2009), (T.M.O.B., per Robitaille), where the opponent did not request the right to be heard, but arrived (late) at the hearing, and requested a retroactive extension of time to be heard, which was denied. At least five days prior to the hearing date, the parties are required to provide one another and the Registrar with their list of case law, as well as copies of any unreported decisions they intend to rely upon at the hearing (see the Practice Notice entitled "Practice in Trade-mark Opposition Proceedings", effective March 31, 2009). In Kraft Foods Holdings, Inc. v. Weetabix of Canada Ltd. (2006), 50 C.P.R. (4th) 189 (T.M.O.B., per Martin), the Board permitted the applicant to make additional submissions in writing where the opponent had only submitted their list of cases one day prior to the oral hearing. Failure to participate at certain stages of the proceedings can result in deemed abandonment of the application, for the applicant, or the opposition, for the opponent (ss. 38(7.1) and (7.2) and Rules 41(2) and 42(2)). (Note, however, that retroactive extensions of time may be permitted in certain circumstances (s. 47(2).) Applicants can lose oppositions for a variety of reasons directly related to the way the original application was drafted, such as upon use when in fact there was no use, improperly relied upon proposed use or an incorrect date of first use, or not describing wares or services in ordinary commercial terms. These and other filing issues are discussed below. When acting for either an applicant or an opponent, care must be taken to thoroughly prepare for the opposition. Vigilance must be exercised throughout the proceedings to evaluate the grounds and the evidence, and to decide whether amendments should be made to the application or the statement of opposition, or whether the evidence already filed should be supplemented. The relevant date for many issues in the opposition is the date of the decision (see “Relevant Dates”, below), suggesting that the parties must constantly consider whether new facts should be adduced.

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The following pages will review some of the areas that frequently lead to problems when drafting the statement of opposition, or are commonly cited in Opposition Board decisions as affecting the final outcome.

II Preparing the Statement of Opposition

1. Selecting the Grounds of Opposition According to section 38(2) of the Act, there are four possible grounds of opposition:

i) non-compliance with section 30; ii) non-registrability, referring to all of the factors in section 12(1),

including name or surname, descriptiveness, confusion with a registered trade-mark, marks which are contrary to section 9 or 10, and, most recently, the Olympic and Paralympic Marks Act, 2007, c. 25;

iii) non-entitlement, referring to prior use or making known of a

confusingly similar trade-mark or trade name, or to a confusing trade-mark in a previously filed trade-mark application; and

iv) non-distinctiveness.

Each of these will be discussed in more detail below.

a) Non-compliance with Section 30 This ground focuses attention on the way the application was drafted. Practically, many issues can be fitted into these criteria. The most common for opposition proceedings include non-compliance with:

• section 30(a) (wares and services must be in ordinary commercial terms); • section 30(b) (the application must include the date from which the trade-

mark was first used); • section 30(d) (improper reliance on a foreign application or registration);

• section 30(e) (if there has been no use, a statement that the applicant

intends to use the trade-mark);

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• section 30(h) (the trade-mark must be depicted accurately); and • section 30(i) (the applicant must state that it is satisfied of its entitlement to

use the trade-mark).

i) Section 30(a): Identification of Goods and Services An applicant must define its wares or services in ordinary commercial terms (s. 30(a)), meaning terms that are commonly used by traders to describe their wares or services, and with the detail normally used in the trade This issue is frequently encountered during prosecution, and the Trade-marks Office maintains a Wares and Services Manual (the "Manual") that provides useful guidelines on acceptable descriptions. The Manual is occasionally updated to reflect changes in Trade-marks Office practice. In January 2006, a significantly revised Manual was introduced and made available online on the Canadian Intellectual Property Office ("CIPO") website. In addition, Practice Notices are issued periodically which set out new requirements for specific wares and services (see, for example, the Practice Notice published August 9, 2006, entitled “Compliance with Paragraph 30(a) – Wine and Beer", in which CIPO has indicated that the wares "wine" and "beer" are now considered sufficiently specific to satisfy section 30(a), without specifying whether or not the wine or beer contains alcohol). The Manual and any pertinent Practice Notices should be reviewed, both at the time of filing the application, and when drafting a statement of opposition, since they may provide guidance in assessing section 30(a) as a ground of opposition. One would think that if the application has been approved during examination, there would be general agreement that the wares have been sufficiently defined. However, in Burroughs Wellcome Inc. v. Novopharm Ltd. et al. (1994), 58 C.P.R. (3d) 513 at 520 (F.C.T.D., per McKeown J.), the Court held that the Opposition Board has the right to decide whether the wares or services are in ordinary commercial terms, regardless of whether an examiner has already approved the application, including the statement of wares or services. Where the wares or services are directed to those having specialized knowledge or expertise, it may be necessary to adduce evidence concerning the understanding of the wares or services within a particular industry or trade to meet the opponent’s initial burden and assist the Registrar in determining whether the requirements of section 30(a) have been met (see Call-Net Telecommunications Ltd. v. Cam-Net Communications Network Inc. (1996), 70 C.P.R. (3d) 283 (T.M.O.B., per Vandenakker) and Oracle Corp. v. Oracle Service Networks Corp. (unreported) [1999] T.M.O.B. No. 8 (January 21, 1999) (T.M.O.B., per Partington) [Oracle Corp.]).

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Several oppositions have succeeded on the ground that the wares or services did not meet the necessary standard. The description of various different types of alcoholic beverages has been fodder for successful section 30(a) oppositions. For example, in Scotch Whisky Association v. Mark Anthony Group Inc. (1990), 31 C.P.R. (3d) 55 (T.M.O.B., per Martin), the description “distilled alcoholic beverages” was challenged on the basis that the wares were not in ordinary commercial terms. The applicant manufactured scotch whisky, brandy, tequila, Canadian whisky, vodka, gin, liquors and intended to sell kirsch, calvados, pear William, grappa and more. The Hearing Officer concluded that the phrase “distilled alcoholic beverages” was a general class of goods, of which these were specific types, and thus the section 30(a) ground was successful and the application was refused. In Molson Cos. Ltd. v. Andres Wines Ltd. (1989), 23 C.P.R. (3d) 544 (T.M.O.B., per Partington), the application originally covered wine, but was amended during the opposition to “wine, namely cider”. The opponent wisely amended the statement of opposition to claim that the wares were not in ordinary commercial terms. The Hearing Officer concluded that there was no evidence that cider was a type of wine, and thus the section 30(a) ground, as well as the non-use ground, succeeded. In Spirits International N.V. v. SC Prodal 94 SRL (2005), 50 C.P.R. (4th) 199 (T.M.O.B., per Bradbury), the statement of wares read “alcoholic beverages, namely distilled grain, wheat and rye spirit except beer”. The Hearing Officer stated at 212 that “the applicant clearly intends to use its mark in association with vodka and yet chose not to refer to vodka in its statement of wares.” Thus, the statement of wares was neither specific nor ordinary. Other decisions have held that a description of wares including the phrase “other fast foods” is not in ordinary commercial terms (Loeb Inc. v. Sub House Inc. (1996), 68 C.P.R. (3d) 400 (T.M.O.B., per Partington)); “tax services” is too broad, and therefore meaningless (H & R Block, Inc. v. U & R Tax Services Ltd. (1993), 49 C.P.R. (3d) 375 (T.M.O.B., per Martin)); and that “other claims and processing services” in the description “insurance and other claims and processing services” is too ambiguous (Oracle Corp., supra). And although in Stanhome Inc. v. Les Encheres Stanley Inc. (1983), 82 C.P.R. (2d) 20 (T.M.O.B., per Partington), “operating a business specializing in the retail sale of classes of household and commercial wares” was held not to require delimiting the products being sold in specific terms or by general categories, subsequent cases have required more detail. The description “the promotion of wares and services of others” was found too broad in Sunshine Village Corporation v. Sun Peaks Resort Corporation (unreported) [2000] T.M.O.B. No. 31 (March 3, 2000) (T.M.O.B., per Partington), as was “development of computer software for others” (Canada Post Corp. v. Butterfield & Daughters Computers Ltd. (2008), 68 C.P.R. (4th) 280 (T.M.O.B., per Martin) [Canada Post v. Butterfield]). In Everything for a Dollar Store (Canada) Inc. v. Dollar Plus Bargain Centre Ltd. (1998), 86 C.P.R. (3d) 269 (T.M.O.B., per Partington), “discount sales outlets for merchandise” was found to be unduly broad. The applicant argued that the trade-mark itself, MORE

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THAN A DOLLAR STORE, limits its services to those associated with the operations of a dollar store, namely household needs. The Board held, however, that the language of section 30(a) does not support the proposition that compliance with the section can be determined by the trade-mark itself. In a recent case, Horn Abbot Ltd. v. Orlicky (2008), 71 C.P.R. (4th) 474 (T.M.O.B., per Herzig), a s. 30(a) ground of opposition succeeded where the applicant described the wares associated with his trade-mark MEANINGFUL PURSUIT as a "printed educational tool namely question cards and accompanying rules of use". The opponent, the owner of the TRIVIAL PURSUIT trade-marks for games, alleged that the applicant intended to use the mark in association with a question and answer game, but deliberately omitted the word "games" from the statement of wares. Despite the applicant's argument that his product was not a game, since a game "requires a scoring system, competition and a winner and losers", the Hearing Officer, in concluding that the statement of wares was not in ordinary commercial terms, stated at p. 478: "Regardless of the precise categorization of the applicant's product, the evidence of record indicates that from a business perspective the product is intended to be marketed as an adult parlour game rather than an educational tool". An attempt to be too specific in describing the wares may also backfire. In 168932 Canada Ltd. trading as Andy Pak v. Alberta Sunflower Seeds (1991), 40 C.P.R. (3d) 151 (T.M.O.B., per Martin), the application covered unroasted sunflower seeds based on use, and roasted sunflower seeds based on use, but as of a later date. An opposition was filed on the basis of confusion with an identical trade-mark, used after the original date of use for unroasted sunflower seeds, but before the date for roasted sunflower seeds. The application was refused with respect to the roasted seeds. If the applicant had merely relied upon use, since the earliest date, for “sunflower seeds”, without trying to specify the goods in such detail, the application might have succeeded in its entirety. Another consideration in drafting wares and services descriptions is that it has been held that, while there is nothing in the Act that restricts a service to one that is not merely incidental or ancillary to the sale of wares, there is nonetheless a requirement that the service must be one that is offered to some third party or be of benefit to the public (Carling O’Keefe Breweries of Canada Ltd. v. Anheuser-Busch, Inc. (1985), 4 C.P.R. (3d) 216 (T.M.O.B., per Troicuk)). Examples of cases where oppositions succeeded based on non-compliance with section 30(a), namely that services were found non-beneficial to the public or self-serving, include Ralston Purina Co. v. Effem Foods Ltd. (1997), 81 C.P.R. (3d) 528 (T.M.O.B., per Groom) and Ralston Purina Canada Inc. et al. v. Effem Foods Ltd. (2000), 5 C.P.R. (4th) 398 (T.M.O.B., per Herzig). In both cases, the applicant’s wares were “pet food” and its services were “advertising, marketing and promotional services relating to the pet food products of the applicant.”

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At an informal meeting several years ago, one of the members of the Opposition Board suggested that every opposition potentially has a section 30(a) ground. This is disheartening for applicants, and should always be considered by prospective opponents. Obviously, like all things, the requirement for specificity can be taken too far. Some industries may be simply too diverse for an applicant to exhaustively list all possible areas of activity conducted. A trade-mark registration must be useful to a registrant for a long period of time, which means that there should be some flexibility in the description of goods or services to permit future growth and diversification. Terms that are already widely used on the Register, such as “banking services” or “grocery store services”, probably should not require further definition, despite the fact that there may be a variety of components that make up these services. Often, terms that might once have been acceptable are held not to conform with the Act, especially after a significant growth in the industry. For example, “computer software”, “telecommunications services” and “pharmaceutical products”, while once permitted, are no longer satisfactory. The best advice for applicants is to first select statements of wares that both identify broad general classes, (for example, clothing), and the goods with the detail normally used in the trade. One might argue that if members of an industry use a certain word or phrase to identify their industry, like, the “garment” industry, or the “jewelry business”, then the requirements of the Act have been met. However, it is unnecessary, and unduly restrictive, to include detail, such as “knit shirts, woven shirts, t-shirts, short sleeve shirts, dress shirts and casual shirts”, when simply “shirts” will do. Second, if oppositions raise issues about the statement of wares or services, the applicant should address these issues immediately. The statement of wares or services can be amended at any time before the Registrar’s decision (as long as the amendment does not extend the goods or services). In Vejee Group (Canada) Ltd. v. Woolworth Canada Inc. (1999), 3 C.P.R. (4th) 12 (F.C.T.D., per Pelletier J.), the Court refused to consider an amendment made subsequent to the Registrar’s decision refusing registration to limit the places where the wares might be sold, on the ground that an application cannot be amended after refusal. The Court stated that, while the Act does not speak directly to post-refusal amendment, common sense suggests that one cannot amend that which has already been adjudicated and that since the application would not be that which was before the Registrar, it therefore cannot be the subject of an appeal. The Court further noted that, from a practical perspective, allowing such amendments would lead to a process of successive approximation in which applicants would draft their claims as widely as possible before the Registrar, only to narrow them to conform to the Registrar’s objections at the appeal stage.

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ii) Section 30(b) (a) Selecting the Correct Date of First Use If the date of first use stated in the application is incorrect, the application may be invalid as failing to comply with section 30(b) (Canadian Olympic Assn. v. Nexa Corp. (1990), 29 C.P.R. (3d) 295 (T.M.O.B., per Martin)). A section 30(b) challenge may be successful where the actual date of first use is later than the date claimed, or where there was no use of the trade-mark on the date of filing an application relying on use in Canada. One case also looked at use earlier than the date claimed (see below), but generally that should not prejudice an applicant. The definitions of “use” in section 4 are important for analyzing this issue, as well as many of the other grounds of opposition. What constitutes use is differently defined for wares (ss. 4(1) and 4(3)) and services (s. 4(2)). See, for example, Data Broadcasting v. Signal 9 Solutions (unreported) [2002] T.M.O.B. No. 121 (October 28, 2002) (T.M.O.B., per Folz) where the Opposition Board held that evidence indicating that a trade-mark was “introduced” on a particular date with sales occurring later invalidated a claim of use for wares but not for services, since the “introducing” of services might satisfy section 4(2). The Federal Court held differently in ConAgra Foods, Inc. v. Fetherstonhaugh & Co. (2002), 23 C.P.R. (4th) 49 (F.C.T.D., per Mackay J.) where marketing efforts in anticipation of a sale were found to be use as a trade-mark in association with wares. Attention should be given to how the wares and services are drafted in terms of dates of first use for each “general class” (see s. 30(b)). In Pronuptia de Paris v. Pronovias (unreported) [2007] T.M.O.B. No. 63 (April 19, 2007) (T.M.O.B., per Carrière), the applicant was unable to show use for several classes of wares and, as a result, the registration was refused with respect to those wares. The Board Member held that the use of a semicolon in the list of wares indicated separate classes of wares. Use must therefore be shown for each class of goods delineated by a semicolon in the application’s list of wares and services. Even more important, for both applicants and opponents, is to check that the full list of wares/services alleged to be used are in use. For opponents, the longer the list of wares/services, the better the chance of challenging at least some on a non-use claim. Use cannot have been abandoned between the date of first use claimed and the filing date of the application. If there is a long period of non-use between the alleged date of first use and filing, a challenge of non-use may succeed (see Loblaws Inc. v. No Frills Auto and Truck Rental Ltd. (2006), 49 C.P.R. (4th) 179 (F.C.T.D., per O'Keefe J.), R.W.S. Hoists & Cranes Inc. v. Richards-Wilcox Canada Inc. (2004), 41 C.P.R. (4th) 258 (T.M.O.B., per Martin) [R.W.S. Hoists & Cranes], Parfums Christian Dior v. Lander Co. Canada Ltd. (2000), 6 C.P.R. (4th)

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257 (T.M.O.B., per Partington) and Labatt Brewing Co. Ltd. v. Benson & Hedges (Canada) Ltd. et al. (1996), 67 C.P.R. (3d) 258 (F.C.T.D., per Simpson J.)). The applicant does not have to establish use of its trade-mark for every single month of the critical period, but a large gap (i.e. 5 years) cannot be ignored (La Confédération des Caisses Populaire et d’Économie Desjardins du Québec v. Accord Business Credit Inc. (unreported) [2005] T.M.O.B. No. 176 (September 21, 2005) (T.M.O.B., per Carrière)). Some dates (e.g., statutory holidays or weekends) are suspect and should be avoided by applicants without specific proof. See, for example Nerds On-Site Inc. v. Iverson (2006), 57 C.P.R. (4th) 139 (T.M.O.B., per Tremblay) and XS Energy, LLC v. Petrillo (2007), 66 C.P.R. (4th) 43 (T.M.O.B., per Carrière), where the claimed date of January 1, 2000 supported the opponent's section 30(b) ground, and Guang Dong Kelon Electrical Holdings Co. et al. v. Kelon Canada Ltd. (2007), 64 C.P.R. (4th) 141 (T.M.O.B., per Bradbury), where a section 30(b) ground succeeded because the applicant did not file any evidence to rebut the opponent’s evidence that the alleged date of first use, namely, December 25th, was a statutory holiday, and that most retail stores would have been closed. With respect to instances where the actual date of first use is later than the date claimed, even a discrepancy of one day is sufficient for invalidation. See, for example, Mougey v. Janzen (2007), 62 C.P.R. (4th) 230 (T.M.O.B., per Bradbury) where the s. 30(b) ground was successful since May 31, 2001 was claimed as the date of first use on imported goods, but the evidence showed the goods did not clear Canadian customs until June 1, 2001. In Avalon Sunsplash Ltd. v. The Friendly Stranger Corp. (2007), 66 C.P.R. (4th) 16 (T.M.O.B., per Herzig), the applicant’s actual date of first use was only three days after the claimed date of use, but this justified the refusal of the application on the s. 30(b) ground. In St. Joseph Media Inc. v. Nygard International Ltd. (2006), 58 C.P.R. (4th) 277 (T.M.O.B., per Bradbury), the applicant relied upon use since August 1998. The evidence showed use in "Fall" 1998. Since August is not a "fall month", and there was no other evidence to support the August date, the s. 30(b) ground succeeded. Generally, if the actual date of first use is earlier than the date claimed in the application, a section 30(b) ground will not succeed. In Marineland Inc. v. Marine Wonderland and Animal Park Ltd. (1974), 16 C.P.R. (2d) 97 (F.C.T.D., per Cattanach J.) [Marineland], the Court held that, since claiming a date later than the actual date is only to an applicant’s disadvantage, an application will not be invalidated for this reason, if the later date was selected “out of a super abundance of caution... in the interest of greater certainty” (Marineland, supra at 106). See also Alibi Roadhouse Inc. v. Grandma Lee’s International Holdings Ltd. (1997), 76 C.P.R. (3d) 327 (F.C.T.D., per Teitelbaum J.) and Sanna, Inc. v. Chocosuisse Union des Fabricants Suisses de Chocolat (1986), 14 C.P.R. (3d) 139 (T.M.O.B., per Troicuk). The latter interpreted Marineland, supra, to stand for the proposition that an applicant may claim any date subsequent to the actual

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date of first use, irrespective of motive. The same view was recently expressed in obiter by the Opposition Board in Alex v. World Wrestling Federation Entertainment Inc. (2008), 68 C.P.R. (4th) 244 (T.M.O.B., per Bradbury) [World Wrestling Federation] and Black Entertainment Television, Inc. v. CTV Limited (2008), 66 C.P.R. (4th) 274 (T.M.O.B., per Tremblay). However, an earlier actual date of first use may lead to a successful s. 30(b) ground of opposition where there is a large discrepancy in dates, with no explanation (see Goodall Rubber Co. v. Goodyear Tire and Rubber Co. (1999), 3 C.P.R. (4th) 393 (T.M.O.B., per Herzig), where the applicant had misstated the date by approximately 30 years, when it clearly knew of the earlier use, leading the Board to doubt that the applicant had misstated the date out of an “abundance of caution” and instead to believe that the applicant “purposely misrepresented” the date of first use in the application. The Board concluded that, as the Trade-marks Register is a public record, the Registrar has a duty to ensure that the Register is as accurate as may be reasonably expected, and that given the foregoing, the misstatement was not excused by what it termed the Marineland “exception”). For agents and companies engaged in the drafting of applications, the advice is: get the proof of use first. Do not simply rely upon the applicant’s recollection of when use commenced. Carefully explain what constitutes use, for both wares and services, and make sure that the date is verifiable. If an opponent raises an issue regarding use or non-use, discuss this immediately with the applicant. If the dates do not seem appropriate, consider whether it is possible to amend the application. However, once advertised, the opportunities for amendment are limited. Under the Regulations, it is not possible to amend an application relying on proposed use to one alleging use (Rule 31(d)), nor is it possible to amend an application after advertisement to change the date of use (Rule 32(b)) to an earlier or later date, or to amend a use-based claim to proposed use (Rule 32(c)) (see Seven-Up Canada Co. v. Caribbean Ice Cream Co. [2007] T.M.O.B. No. 49 (March 9, 2007) (T.M.O.B. per Bradbury)). It should be possible to delete a proposed use claim, provided that leave to make such an amendment is made early on in the opposition proceedings. In Fisons Pharmaceuticals Ltd. v. Sales Affiliates Inc. (1973), 10 C.P.R. (2d) 123 at 125 (per Robitaille, Registrar of Trade-marks), the applicant's request at the hearing stage for leave to amend the application to delete the wares based on proposed use (and maintain the application only in respect of the wares based on use in Canada) was refused on the basis that "the ground of opposition with respect to the applicant's proposed use was clearly set out in the statement of opposition, and that the applicant had ample opportunity, prior to the completion of the opposition proceedings, to request leave to amend its statement of wares".

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The Opposition Board has also held that, while an applicant is not barred from obtaining a registration simply because it filed an incorrect application at one time, when the applicant fails to explain the discrepancy between two divergent dates, the applicant may fail to meet the legal onus set out in s. 30(b) (see Data Management Strategies Ltd. v. SNS/Assure Corp. (2000), 9 C.P.R. (4th) 388 (T.M.O.B., per Herzig)). An interesting line of cases demonstrates why it is important to consider multiple grounds of application, since if one fails during an opposition, the application will not necessarily be refused if a second ground of application can succeed. For example, an application that relies upon use which in fact cannot be substantiated during an opposition may not necessarily fail, if the applicant’s use and registration abroad basis can succeed. In McCabe v. Yamamoto & Co. (America) Inc. et al. (1989), 23 C.P.R. (3d) 498 (F.C.T.D., per Joyal J.) [McCabe], the judge found that the applicant had failed to demonstrate use in Canada based on the unlawful use by a distributor. However, Joyal J. noted that there was a second ground of application, namely use and registration in the United States, and it was fully valid, and thus permitted the application to succeed. Subsequent Opposition Board decisions have followed the ruling in McCabe, supra, see Lowenbrau Aktiengesellschaft v. Comm. Telesforo Fini Societa Per Azioni (1991), 36 C.P.R. (3d) 54 (T.M.O.B., per Savard) [Lowenbrau], Aetna Life Insurance Co. of Canada et al. v. S.N.J. Associates, Inc. (2001), 13 C.P.R. (4th) 539 (T.M.O.B., per Folz) and Enterprise Car & Truck Rentals Ltd. v. Enterprise Rent-A-Car Co. (1998), 87 C.P.R. (3d) 544 (T.M.O.B., per Martin). However, any inconsistency between wares and services in the Canadian application and the United States registration may cause the inconsistent wares or services to be severed from the Canadian registration. See, for example, Enterprise Car & Truck Rentals Ltd. v. Enterprise Rent-A-Car Co. (2000), 7 C.P.R. (4th) 368 (T.M.O.B., per Folz) where one category of services incorrectly based on use (rather than on making known) in Canada was disallowed, but . the remaining services based on use and registration in the United States were allowed, even though they were slightly different than the services as specified in the Canadian application. It was implied that if the services in the United States registration did not cover the services listed in the original Canadian application, then the application would fail. There may be some threshold where a faulty use claim is considered to completely nullify an application. In Lowenbrau, supra, the opponent claimed that the applicant’s false use dates made the application fraudulent, and thus not “an application”. The opponent did not meet the evidentiary onus of showing bad faith or intent to deceive and thus this ground failed, but the argument might succeed in certain cases.

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If there is a real concern about supporting a use claim once in opposition, and an amendment is either not permitted or raises the problem of possible invalidity, wise counsel should consider re-filing, with the correct date of first use. It is better to fight an opposition on important grounds, such as the likelihood of confusion, than to lose on technical grounds. (b) Applicant’s or Predecessor’s Use of the Trade-mark If an applicant relies upon use, it should confirm whether it is its use, or use by a licensee or predecessor. In R.W.S. Hoists & Cranes, supra, a section 30(b) ground succeeded where the evidence showed the use was by a predecessor, and not the applicant. Predecessors should be named (see Gemstar Development Corporation v. Dierks (2004), 42 C.P.R. (4th) 466 (T.M.O.B., per Bradbury), Bio Agri Mix Ltd. v. Canadian Bio-Systems Inc. (2001), 20 C.P.R. (4th) 372 (T.M.O.B., per Bradbury), and Fromages Saputo v. Frank Marello [2009] T.M.O.B. No. 14 (T.M.O.B, per Robitaille)). See also Molson Breweries, A Partnership v. John Labatt Ltd. (1994), 56 C.P.R. (3d) 107 (T.M.O.B., per Martin), where an amalgamating corporation was held not to be a predecessor in title because an amalgamation does not constitute a transfer or assignment of trade-mark rights. This reasoning has been followed in CPSA Sales Institute v. Groupe Conseil Parisella, Vincelli Associés Inc. (unreported) [2005] T.M.O.B. No. 105 (June 13, 2005) (T.M.O.B., per Carrière)). It pays to remember that s. 30(b) requires a date of first use by the applicant or its named predecessor. If the applicant is a corporation, it cannot rely upon its use before incorporation. If there was earlier use, the applicant should rely upon use by the individual as a predecessor in title (see, for example, Asset Inc. v. Park It & Sell It of Canada Ltd. [2007] T.M.O.B. No. 60 (April 18, 2007) (T.M.O.B. per Bradbury), Libra National Inc. v. Jiva Manufacturing & Distributing Inc. [2007] T.M.O.B. No. 102 (July 5, 2007) (T.M.O.B., per Bradbury), Viacom International Inc. v. Crossroads Publications Inc. [2008] T.M.O.B. No. 54 (February 6, 2008) (T.M.O.B., per Bradbury), and Hope International Development Agency v. H.O.P.E. (2008), 72 C.P.R. (4th) 4 (T.M.O.B., per Herzig). It can also be fatal to incorrectly identify the applicant claiming use. In Archmetal Industries Corp. v. Jag Flocomponents NA Inc. (unreported) [2007] T.M.O.B. No. 70 (May 3, 2007) (T.M.O.B., per Bradbury), use was claimed by the applicant on the associated wares since 2002. The opponent succeeded on, inter alia, s. 30(b) grounds by producing NUANS evidence that no such legal entity as Jag Flocomponents NA Inc. existed. The search produced registered business names very similar to the applicant’s, yet no rebuttal evidence was submitted to correct the record. Similarly, in Sunseeker International (Boats) Ltd. v. Three Buoys Houseboat Vacations Ltd. (unreported) [2008] T.M.O.B. No. 114 (June 9,

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2008) (T.M.O.B., per Robitaille), naming predecessors and not connecting them to other entities who may have used the trade-mark supported the opponent’s s. 30(b) ground. (c) Licensee's Use of the Trade-mark Under section 50 of the Act, use by a licensee is the same as use by the trade-mark owner (prior to June 9, 1993 when section 50 was amended, the owner could claim the benefit of licensed use of a mark for registered users of the mark only). If the trade-mark owner authorizes a licensee to sub-license the mark, the use by the sub-licensee will inure to the benefit of the owner as well (s. 50(1)). In drafting an application based on actual use, the applicant should determine whether use has taken place by a licensee, or a sub-licensee, if there are any. If the use was by a licensee, and not the applicant, the application should say so (the online filing form contemplates use and proposed use by an applicant and/or a licensee) (see United Distillers Glenmore Inc. v. El Toro Restaurant & Pizzeria Ltd. (1996), 70 C.P.R. (3d) 346 (T.M.O.B., per Savard)). Failure to reference the licensee can invalidate the application under s. 30(b) or 30(e) (see Alltemp Products Co. v. Bit Holder Inc. (2007), 63 C.P.R. (4th) 112 (T.M.O.B., per Bradbury) where, on cross-examination, it was revealed that it was always intended that the licensee, and not the applicant, use the trade-mark. Use by a licensee was not mentioned in the application. See also Molson Canada 2005 v. Cardoso (2007), 64 C.P.R. (4th) 215 (T.M.O.B., per Martin) [Molson Canada 2005]). Section 50 includes a provision that, “to the extent that public notice is given of the fact that the use of a trade-mark is a licensed use and of the identity of the owner, it shall be presumed, unless the contrary is proven, that the use is licensed by the owner of the trade-mark and the character or quality of the wares or services is under the control of the owner” (s. 50(2)). It is good practice for trade-mark owners to require licensees to include such notices on the wares, or in the advertising of services. Such notices can help establish the necessary relationship between the trade-mark owner and a licensee when the licence has not been reduced to writing. In Wells’ Dairy Inc. v. U.L. Canada Inc. (2000), 7 C.P.R. (4th) 77 (F.C.T.D., per Heneghan J.), despite the fact that there was no evidence of a written licensing agreement, the mark was still considered valid because there was an oral licensing agreement and because there was sufficient public notice of the licence on the wares. Also, in Genzyme v. Merz Pharma [2008] T.M.O.B. No. 179 (T.M.O.B., per Carrière), the Hearing Officer was prepared to accept the opponent's control over its licensees after looking at the evidence, which included both copyright and trade mark notices identifying the opponent.

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Once an opposition is started, both applicants and opponents must ensure to address the issue of who is using the trade-mark as evidence is being prepared. If the use is by someone other than the trade-mark owner, the evidence should state that the use is by a licensee, and that the trade-mark owner controls the character and quality of the wares/services associated with the trade-mark. The evidence must also show how such control takes place. In some instances, an applicant may wish to preserve the confidentiality of a licensing agreement, in which case the applicant can establish in court the existence of a licensing agreement by an affidavit accompanied by a sample of a label giving public notice of the fact of licensed use (Saputo Groupe Boulangerie v. National Importers Inc. (2005), 44 C.P.R. (4th) 241 (F.C.T.D., per Noël J)). Corporate structure alone is insufficient to establish the existence of a licence within the meaning of s. 50. There must also be evidence that the applicant controls the use of the mark by the related company and takes steps to ensure the character and quality of the services provided (London Drugs Ltd. v. Purepharm Inc. (2006), 54 C.P.R. (4th) 87 (T.M.O.B., per Tremblay) and Axa Assurances Inc. v. Charles Schwab & Co. (2005), 49 C.P.R. (4th) 47 (T.M.O.B., per Tremblay). See also Hughes v. Blanchard Training & Development Inc. (unreported) [2004] T.M.O.B. No. 66 (March 29, 2004) (T.M.O.B., per Carrière), where the opponent’s evidence of use was disregarded since such use did not satisfy the requirements of section 50 (controlled licence)). Oral licences have also been recognized in House of Kwong Sang Hong International Ltd. v. Borden Ladner Gervais (2004), 31 C.P.R. (4th) 252 (F.C.T.D., per Noël J.) and in Cushman & Wakefield, Inc. v. Wakefield Realty Corp. (2004), 35 C.P.R. (4th) 460 (F.C.T.D., per Harrington J.), aff’d (2004), 37 C.P.R. (4th) 212 (F.C.A., per Pelletier J.A.) where authority to use the trade-mark was not in writing but still acceptable under s.50(1), as there were other agreements, not specifically referring to trade-marks, and close monitoring of business activities. Incidentally, it is equally important for opponents to keep licensing issues in mind when they are relying on particular trade-mark registrations in support of an opposition. In the recent case of Air Canada v. DHL Airways, Inc. (2008), 69 C.P.R. (4th) 411 (T.M.O.B., per Martin), the opponent's ground of opposition based on confusion with its registered marks failed, in part, because third parties were permitted to use the marks, with no indication as to trade-mark ownership or any licence agreement, thus undermining the distinctiveness of the opponent's marks. (d) Use “as a Trade-mark” An opposition may succeed on section 30(b) grounds where the mark applied for has not been used “as a trade-mark”, but instead has functioned as a trade name

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or served a descriptive function. The former was the case in Canadian Medical Association v. Physician’s Choice of Arizona, Inc. (2005), 46 C.P.R. (4th) 214 (T.M.O.B., per Herzig). The applicant used the trade name PHYSICIAN’S CHOICE and sought to register it as a trade-mark. The applied for mark appeared on the product packaging, but only inconspicuously in diminutive lettering. Wherever the term PHYSICIAN'S CHOICE appeared, it was accompanied by the trade-mark symbol TM in superscript and followed by a mailing address. The font size of the term PHYSICIAN'S CHOICE was sometimes, but not always, larger than the mailing address. The opponent argued, and the Hearing Officer agreed, that the display of the symbol TM adjacent to the term PHYSICIAN'S CHOICE could not, by itself, operate to transform trade name use into trade-mark use. The Hearing Officer said at p. 221: “In my view the term PHYSICIAN'S CHOICE cannot be said to identify or distinguish the product. Rather, the term operates to alert the consumer of the manufacturer's mailing address.” See also Videotron Ltd. v. Illico Informatique Inc. (2008), 74 C.P.R. (4th) 281 (T.M.O.B., per Carrière), where the applicant's application for !LLICO Design, based on use in Canada by the applicant's predecessor in title, was refused since the assignment document between the applicant and its predecessor in title referred only to the corporate name "!llico" and the domain name "illico.net", nor was there sufficient evidence to conclude that the applicant's predecessor had used !LLICO Design as a trade-mark. Noting that the applicant's principal was a trained lawyer, the Hearing Officer stated at p. 287: "If [the applicant] intended to acquire the !llico name as a trade-mark, he could have done so and included it in the assignment agreement, ensured that it had been used as a trade-mark in association with the Services and included the goodwill associated with this trade-mark in the assignment agreement." An example of a descriptive use, as opposed to trade-mark use, is shown in Kellogg Canada Inc. v. Weetabix of Canada Ltd. [2007] T.M.O.B. No. 147 & 148 (October 1, 2007) (T.M.O.B., per Martin) [Weetabix], involving the marks HOOPS and OAT HOOPS. The applicant’s evidence showed that the marks were used to describe a particular category of bulk product. A s. 30(b) opposition ground succeeded since such use was not trade-mark use. (e) Variations in the Trade-mark Minor variations between the trade-mark used on the claimed date of first use and the trade-mark for which registration is sought might be the basis for a successful section 30(b) opposition. In Coastal Culture Inc. v. Wood Wheeler Inc. (2007), 57 C.P.R. (4th) 220 (F.C.T.D., per O'Keefe J.), supplementary reasons at 2008 FC 753 [Coastal Culture], the applicant's alleged use of the mark DIRT SHIRT was based on prior use of the marks P.E.I. DIRT SHIRT and THE ORIGINAL P.E.I. DIRT SHIRT. The applicant submitted that, despite the words "P.E.I." and "THE ORIGINAL", the words "DIRT SHIRT" were the dominant feature on its wares, and this minor deviation did not constitute non-use

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of the mark. In refusing this argument and the application to register the trade-mark, the Federal Court held that the applicant never used the mark DIRT SHIRT in isolation; its wares were always labelled P.E.I. DIRT SHIRT or THE ORIGINAL P.E.I. DIRT SHIRT and therefore, "P.E.I" had always been an element of the alleged mark. Citing Burroughs Wellcom Inc. v. Kirby, Shapiro, Eades & Cohen (1983), 73 C.P.R. (2d) 13 (F.C.T.D., per Catanach J.), the Court noted that, unlike in the U.K., there is no provision in the Act that provides that "the use of the whole of a registered trade-mark shall be deemed also to be the use of a registered trade-mark which forms part of the whole if the registered owner is the same." See also Molson Canada 2005, supra., where a similar finding was made regarding the trade-mark CANADIAN ADVENTURE BEER KIT. On the wares, the words CANADIAN ADVENTURE were separated from BEER KIT, which also seemed to be a descriptive use.

(iii) Section 30(d): Improper Reliance On a Foreign Application or Registration

Section 30(d) provides that, where an applicant relies on a foreign application or registration as the basis for registration, the applicant must provide particulars of the foreign application or registration, and if the mark has not been used or made known in Canada, the name of a country in which the trade-mark has been used by the applicant or his named predecessor-in-title in association with each of the general classes of wares and/or services described in the application. Where the applicant has not used the trade-mark in another country with each of the general classes of wares and services, an opponent will be able to argue that the applicant has not complied with s. 30(d). Such an allegation was made in Genesco Inc v. Jarmon (2001), 19 C.P.R. (4th) 397 (T.M.O.B., per Partington). However, the opponent did not adduce any “evidence or argument” and thus failed to meet its initial evidentiary burden. The same allegation was made in 105272 Canada Inc. v. Grands Moulins de Paris (1990), 31 C.P.R. (3d) 79 (T.M.O.B., per Partington), and, in this case, the opponent included an affidavit attesting to the results of enquiries by an investigation company into whether the mark in question had in fact been used in France with restaurant services, as claimed. However, because the investigation was conducted over two years subsequent to the material date (the filing date of the application), and did not relate to “matters existing, or which could reasonably be inferred as existing, prior to applicant’s filing date” (p. 84), the evidence was given no weight and the opponent was held to have failed to meet its evidentiary burden. In its decision, the Board, citing earlier cases dealing with section 30(b), recognized at p. 82 that “it is difficult for an opponent to prove an allegation of non-use by an applicant” and thus the “amount of evidence required to discharge this evidential burden may be very slight”. This is especially the case with respect to allegations under section 30(d), where the non-use is alleged to take place in a foreign jurisdiction.

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Given the difficulty faced by an opponent trying to show that the applicant has not used its mark on certain wares in a foreign country as of a particular date in the past, the Board has, on several occasions, allowed the opponent to meet its initial evidentiary burden by introducing evidence that the applicant’s mark is not used on the applicant’s website. In Allergan Inc. v. Lancôme Parfums & Beauté & Cie, general partnership (2007), 64 C.P.R. (4th) 147 (T.M.O.B., per Robitaille), the opponent filed an affidavit based on searches of the applicant’s French website, which “served to establish that the Applicant appears to promote its products on its Internet site” (at p. 174), but that the applied-for mark was not featured on it, allowing the Board to infer that the mark was not used in France or had been abandoned. Because the applicant did not even attempt to adduce evidence of use in France, despite the relative ease of doing so if the mark had been used, the opponent was held to have met its initial evidentiary burden, and the section 30(d) ground of opposition succeeded. (See also Canadian Medical Assn. v. D. C. Soldan (unreported) [2004] T.M.O.B. No. 175 (November 22, 2004) (T.M.O.B., per Bradbury) [Soldan]). Both for those drafting applications, and those considering oppositions, an improper claim to "use" in a "use and registration abroad" application can be fatal. The longer the list of goods/services, the more likely the chance of a successful challenge. (a) Variations in the Trade-mark Where the applicant seeks registration on the basis of the use and registration of its trade-mark in another country, the mark applied for in Canada must be identical to the foreign-registered one. A section 30(d) ground of opposition was successful in Nora Beverages Inc. v. Nana Immobiliaria de Nogales, S.A. de C.V. (unreported) [1998] T.M.O.B. No. 163 (September 30, 1998) (T.M.O.B., per Partington) where the applicant sought registration of a design mark in Canada based on a Mexican registration. However, certain elements present in the Mexican registration were omitted from the Canadian application. The applicant failed to explain why the mark had been changed, or to show that the change would not have had an impact on the mark being registered in Mexico, and thus the opponent was successful under section 30(d). (b) Use of the Trade-mark by Applicant or Predecessor A ground of opposition based on section 30(d) may also succeed where it is found that the use of the trade-mark in the foreign country was by neither the applicant nor its predecessor in title. An early Board decision held that “the use of the mark in a country of the Union must be by the applicant himself or his predecessor in title, and not by a person authorized to employ the mark by virtue of the laws of the countries of the Union” (David Crystal Inc. and Izod v. La Chemise Lacoste (1973), 22 C.P.R. (2d) 78 at 82 (T.M.O.B., per Robitaille). That decision was followed in Molson Cos. Ltd. v. Rola Weinbrennerei Und

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Likorfabrick GmbH (1988), 23 C.P.R. (3d) 197 (T.M.O.B., per Partington), where use in Germany by the applicant's licensees and distributors was held not to meet the requirements of section 30(d), notwithstanding the fact that, under German law, such use would accrue to the applicant. (c) Non-compliance with Section 31(1) Finally, in at least one decision, the Board has indicated that an applicant’s non-compliance with the requirements of section 31(1) may be considered by the Board in determining whether the applicant has complied with section 30(d). Section 31(1) requires an applicant relying on registration and use abroad to provide a certified copy of the foreign registration and a translation thereof into English or French. In Molson Breweries, a partnership v. Schlossbrauerei Kaltenberg Irmingard Prinzessin Von Bayern KG (1991), 40 C.P.R. (3d) 543 (T.M.O.B., per Partington) [Molson v. Schlossbrauerei Kaltenberg], the opponent argued that section 31(1), and consequently section 30(d), had not been complied with due to certain irregularities in the certified copies and translations (including a certified copy dated subsequent to the date of the English translation). However, the opponent did not make this argument until the oral hearing, and the Board held that, while it may properly consider whether the applicant has met the requirements of section 31(1) when considering a section 30(d) ground of opposition, it could not do so in this case because the opponent had failed to specifically plead the applicant’s non-compliance with section 31(1).

iv) Section 30(e): Improper Reliance Upon “Proposed Use” as a Basis of Application Several cases have held that reliance upon “proposed use” as a basis of application, when in fact there has been use of the mark in Canada prior to filing, will invalidate the application under section 30(b). That section requires that the date from which the trade-mark has been used be included “in the case of a trade-mark that has been used in Canada” (see Tone-Craft Paints Ltd. v. Du-Chem Paints Co. Ltd. (1969), 62 C.P.R. 283 (T.M.O.B., per Robitaille) [Tone-Craft Paints], followed in Société Nationale Elf Acquitaine v. Spex Design Inc. (1988), 22 C.P.R. (3d) 189 (T.M.O.B., per Troicuk) [Société Nationale Elf], Frisco-Findus S.A. v. Diners Delite Foods Ltd. (1989), 26 C.P.R. (3d) 556 (T.M.O.B., per Martin) [Frisco-Findus], and Les Systems de Formation et al. v. Patrick and Michael Scissons (unreported) [2004] T.M.O.B. No. 63 (March 22, 2004) (T.M.O.B., per Carrière) [Les Systems de Formation]). In each of the Société Nationale Elf, Frisco-Findus and Les Systems de Formation, supra decisions, the Hearing Officer expressed concern at the “harshness” of a finding that use, prior to a proposed use claim, can result in the refusal of an application, but each case reluctantly followed the original Tone-Craft Paints, supra reasoning that, where an application should have been filed

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on the basis of use, and not proposed use, the application will not comply with section 30(b), and must be refused. The section 30(b) ground of attack, used in the above-mentioned cases, is similar to a ground of opposition based on section 30(e), which requires, in the case of a proposed trade-mark, a statement that the applicant or a licensee intends to use the trade-mark in Canada. The same type of reasoning as used in the above-noted cases was applied successfully to a section 30(e) ground of opposition in R. Griggs Group Ltd. v. 359603 Canada Inc. (2005), 47 C.P.R. (4th) 215 (T.M.O.B., per Tremblay). The opponents did not file any evidence supporting their allegation that the applicant, at the time of filing an application based on proposed use, was already using the mark. The Hearing Officer, noting that “it is difficult to prove a negative,” held that the applicant’s own evidence could be used to support the allegation. The ruling was far from “harsh”, given that the applicant was attempting to benefit from an association between the wares and the mark from a date prior to its proposed use application for the purposes of consideration of the issue of confusion. It should be noted that the section 30(e) ground in this case only succeeded to the extent that use of a mark prior to filing is inconsistent with a proposed use application. The Hearing Officer went on to state at p. 233: "In the event that I have erred in my finding with respect to the first part of the [section 30(e)] ground of opposition, I find that the Opponents have failed to discharge their burden of supporting the allegation that the Applicant never intended to use the Mark in Canada…. Therefore the second part of the ground of opposition based on non-compliance with Section 30(e) is dismissed." If the applicant itself will not use the trade-mark, but instead intends to license the mark, the application should clearly say so. Failure to make that statement, accompanied by evidence that the use was by a licensee only, will sustain a s. 30(e) ground of opposition (see Applica Consumer Products, Inc. v. InfraReady Products (1988) Ltd. [2007] T.M.O.B. No. 172 (November 13, 2007) (T.M.O.B., per Herzig). See also Crossworld Software, Inc. v. Crossworlds Software, Inc. (2006), 52 C.P.R. (4th) 461 (T.M.O.B., per Bradbury), where a proposed use application was refused based on the applicant's own evidence that it had entered into a licence agreement prior to filing the application). Although ultimately unsuccessful, of note is an opposition based on non-compliance with section 30(e) (no intention to use the mark), where the opponent alleged that the application for the mark, which the opponent had already been using outside Canada, was essentially a bargaining ploy on the part of the applicant. In support, the opponent cited the following facts: the applicant had previously sought either to distribute the opponent’s products by importing them into Canada, or to manufacture and sell the wares by way of licence from the opponent. (The applicant had acted as a distributor or licensee of some of the opponent's other beverage trade-marks). In the course of negotiations, the applicant agreed to assign the trade-mark to the opponent. The Board held that

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it was not satisfied that, at the date of application, the applicant’s intention was to license or distribute, and that, in fact, the filing of the application itself was inconsistent with a distribution or licensing intent (National Brands Ltd v. Tropika Canada Inc. (1998), 87 C.P.R. (3d) 150 (T.M.O.B., per Partington)). A section 30(e) challenge was successful in Intel Corp. v. Emeny (2005), 49 C.P.R. (4th) 459 (T.M.O.B., per Bradbury), where the applicant sought to register “IDEAS INSIDE” in association with a long list of wares and services. The applicant’s admission that the primary intent of the long list of wares and services was to prevent others from using the trade-mark in association with the wares was sufficient for the Hearing Officer to find that the applicant did not meet the requirements of section 30(e). (See also Canadian Tire Corp. v. Gorsky (2005), 50 C.P.R. (4th) 34 (T.M.O.B., per Tremblay)). Another recent clear cut example of a successful section 30(e) challenge can be found in Hola, S.A. v. Pereira (2008), 72 C.P.R. (4th) 416 (T.M.O.B., per Pelletier), involving an application to register the trade-mark HELLO & Design based on proposed use in association with streaming video and media production services. While the applicant formally complied with the requirements of s. 30(e) by including a statement that he intended to use the trade-mark in Canada, the Hearing Officer found that this statement was not true since the applicant admitted in his counter statement, on cross-examination, and at the oral hearing that he never intended to use the mark HELLO & Design, rather the mark was always intended to be TVHello. The Hearing Officer stated at p. 422: "Noncompliance with s. 30(e) of the Act is not a mere technicality and Mr. Pereira's false statement makes the present application void from the outset, as such the application is refused solely on that ground". In Dollar General Merchandising, Inc. v. Steinberg (2009), 74 C.P.R. (4th) 341 (T.M.O.B., per Herzig), the opponent's s. 30(e) ground succeeded where the proposed use application for DOLLAR GENERAL was filed in the name of the wife of the president of the company intending to use the trade-mark, since the company did not want to publicly reveal its business venture until financing was in place. In refusing the application for non-compliance with section 30(e), the Hearing Officer stated at p. 347: "I do not impute any fraudulent intent to the applicant, but the evidence is clear that the applicant was acting simply as a straw man for the business purposes of [the company intending to use the trade-mark]". Also of note concerning section 30(e): naming two individuals as the “applicant” for a trade-mark registration is contrary to the Act, and is therefore a valid ground for opposition (see Hasbro Canada Inc. v. Nelson et al. (1999), 2 C.P.R. (4th) 260 (T.M.O.B., per Partington)).

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v) Section 30(h): Accurately Representing the Trade-mark in the Application An applicant must ensure that the depiction or description of a design trade-mark is as precise as possible. The Opposition Board and the Courts can be very strict in applying section 30(h) of the Act, which states that any word or words depicted in a “special form” must be accurately represented. In N.V. Sumatra Tobacco Trading Co. v. Imperial Tobacco Ltd. (2001), 11 C.P.R. (4th) 501 (F.C.T.D., per O’Keefe J.), the Court held that the Opposition Board had the right to refuse the registration of the trade-mark HERO & Design in association with cigarettes and cigarette lighters because the applicant had simply photocopied an unfolded blank cigarette package instead of drawing a three dimensional cigarette package which was a more accurate description of the trade-mark. As O’Keefe J. stated at p. 514:

[T]he trade-mark used by Sumatra [the applicant] in Indonesia and intended to be used in Canada consists of wording and other matter applied to a three dimensional six-sided cigarette package. The trade-mark applied for consists of wording and other matter contained within a two-dimensional, twenty-sided figure.... It is important that the drawing accurately depict the trade-mark as there is an important public interest in knowing what trade-mark the appellant intends to protect with the application.

Although other registered marks had previously used photocopies of unfolded cigarette packages in their depiction, the Court still found that the application could not succeed because each case must be decided on its own merits, and neither the Court nor the Opposition Board is bound by the state of the Register. In another case involving an inaccurate depiction, namely, Novopharm Ltd. v. Bayer Inc. (1999), 3 C.P.R. (4th) 305 (F.C.T.D., per Evans J.), the Court refused a trade-mark application because the word description stated that the proposed mark was the colour “dusty rose”, while the drawing in the application depicted the trade-mark in the colour “blue”. Although this discrepancy had not caused any confusion on the part of the opponent, the Court still refused the application since “the regulations for advertising require strict compliance and mistakes cannot be waived by some test of probability of confusion” (aff’d (2000), 9 C.P.R. (4th) 304 at 306 (F.C.A., per Strayer J.A.). Defects in drawings were also examined in Novopharm Ltd. v. Pfizer Canada Inc. (2001), 18 C.P.R. (4th) 395 (T.M.O.B., per Bradbury). In this case, the opponent submitted that the application failed to comply with s. 30 since the advertised drawing did not contain an accurate representation of the mark, namely, the drawing did not show lettering that appeared on the tablets. The Board rejected this submission, since the markings on the tablets were not highly visible, and concluded that it was not a significant variation to the mark. The Board did

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accept, however, that the combination of dotted and solid lines accompanied by a statement that the tablet shown only in the dotted outline does not form part of the trade-mark, did not provide a sufficiently accurate representation of the mark. This ground of opposition was successful. Of course, care must be taken that the drawings are not only accurate representations of the mark applied for but also accurate representations of the mark as used. Failure to do so can lead to a finding of non-compliance with s. 30(b) (even where s. 30(h) has been complied with). For example, in Sealy Canada Ltd. v. Simmons I.P. Inc. (2005), 47 C.P.R. (4th) 296 (T.M.O.B., per Folz), the applicant applied to register a design of a woman reclining on a mattress and submitted a line drawing of the design with its application. The s. 30(b) ground of opposition was successful because the design as used was not a drawing but a photograph and the variations between a photograph of a “specific, live woman and a fanciful drawing of a generic woman” (p. 308) are substantial enough to find that the applied-for mark was not used on the claimed date of first use.

vi) Section 30(i): Satisfaction of Entitlement to Use the Trade-mark Section 30(i) may be referred to where an opponent alleges that the applicant could not have been satisfied of its entitlement to use a trade-mark, therefore improperly stating so in its application, for a variety of reasons. (a) Bad Faith In order for a section 30(i) ground of opposition to succeed, there must be a “bad faith” element to the applicant’s conduct, making the section useful only in exceptional circumstances (Sapodilla Co. Ltd. v. Bristol-Myers Co. (1974), 15 C.P.R. (2d) 152 (T.M.O.B., per Thurm)). Because any allegation of bad faith is taken very seriously, the opponent must be careful in setting out the facts to support the claim in the pleadings, and in supporting the facts through properly admissible evidence. Mere awareness by the applicant of the opponent’s mark is not sufficient. The opponent must state and show that the applicant knew it was not entitled to register the mark. A s. 30(i) ground succeeded in Lifestyles Improvement Centres, LLP v. Chorney (2007), 63 C.P.R. (4th) 261 (T.M.O.B., per Bradbury) where the applicant had a “relationship” with the opponent’s predecessor which could be viewed as a licence. Under the terms of that agreement, the applicant was not entitled to claim rights in the trade-mark personally. When the predecessor went bankrupt, the Hearing Officer found that the applicant could not have been satisfied of her entitlement to use the trade-mark (or more specifically, claim rights to ownership of the trade-mark). Although the Hearing Officer chose not to use the term "bad faith" in this case, in a useful summary, she stated at p. 275, “it is clear from the

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case law that licensees, distributors and the like should not be allowed to usurp their principle’s trade-marks.” A more recent case in which a s. 30(i) ground of opposition succeeded is Cerverceria Modelo, S.A. de C.V. v. Marcon (2008), 70 C.P.R. (4th) 355 (T.M.O.B., per Folz), which involved an attempt to register the trade-mark CORONA for, among other wares, coolers containing distilled spirits and beverage bottling services. The same day, the applicant applied to register 18 other well known marks, including ABSOLUT, HEINEKEN, FINLANDIA, BEEFEATER, CANADIAN CLUB, COORS, BUDWEISER, JACK DANIEL'S and DOM PERIGNON, for related wares. He admitted on cross-examination that, at the filing date, he was aware of CORONA beer, as well as the established reputation of most, if not all, of the marks for which he had applied. While the Hearing Officer was not prepared to say that the term "bad faith" was applicable in this case, she stated at p. 369:

I question how any reasonable person would be satisfied that he/she was entitled to file trade-mark applications for over 18 arguably well known marks for arguably related wares and/or services. I also question the underlying intent of such an applicant in doing so. In my view, the activity of attempting to coat-tail on the established reputation of so many well known marks should be the type of activity that s. 30(i) is designed to prevent.

(b) Non-compliance with Federal or Provincial Statutes or Regulations In some cases involving section 30(i), opponents have alleged non-compliance with other federal statutes or regulations, such as the Food and Drugs Act, R.S.C. 1985, c. F-27, or consumer packaging legislation. The decisions in these cases have been inconsistent. In the past, a section 30(i) ground based on non-compliance with other federal statutes or regulations would generally not succeed. For example, in Canadian Bankers Association v. Northwest Bancorporation (1979), 50 C.P.R. (2d) 113 (T.M.O.B., per Metcalfe), the Hearing Officer indicated that an allegation of non-compliance with the Bank Act, R.S.C. 1970, c. T-10 (now R.S.C. 1985, c. B-1, as amended) should be pursued in another forum, and not in an opposition. In Crush International Ltd. v. Canada Dry Ltd. (1979), 59 C.P.R. (2d) 82 (T.M.O.B., per Partington), dealing with the C PLUS design trade-mark for soft drinks, the opponent relied on non-compliance with regulations under the Food and Drugs Act, supra, which had not yet come into force when the opposition was filed, but were published after the filing of the written argument. The Hearing Officer stated that his discretion was limited to the grounds in section 37 (now 38) of the Act, which did not include compliance with other laws. Interestingly, the Hearing Officer noted that if the trade-mark had been deceptively misdescriptive under

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those regulations, that would be relevant to the issue of non-registrability based on descriptiveness, also argued in the opposition. Since then, however, the trend seems to have been reversed, as non-compliance with federal statutes has led to successful section 30(i) based oppositions (see, for example, Co-operative Union of Canada v. Tele-Direct (Publications) Inc. (1991), 38 C.P.R. (3d) 263 (T.M.O.B., per Martin), where a section 30(i) ground succeeded on the basis that use of the mark CO-OP likely contravened the Canada Cooperative Associations Act, R.S.C. 1985, c. C-40; Institut National des Appellations d’Origine v. Brick Brewing Co., Ltd. (1995), 66 C.P.R. (3d) 351 (T.M.O.B., per Martin), where it was successfully argued that use of the trade-mark THE COGNAC OF FINE BEER for beer, contravened the Food and Drugs Act, supra; House of Edgeworth Inc. v. Barrons (1992), 42 C.P.R. (3d) 463 (T.M.O.B., per Martin), where the application (which covered both tobacco products and non-tobacco products) was refused in respect of wares because the sale of both types of products, by the same entity, contravened the provisions of the Tobacco Products Control Act, R.S.C. 1985, c.14, then in force; and Canadian Red Cross Society v. Kit Care Corp. (1998), 86 C.P.R. (3d) 536 (T.M.O.B., per Partington), where potential contravention of the Canadian Red Cross Society Act, S.C. 1909, c.68 provisions concerning use of the sign of the Red Cross in Canada was found to be a sufficient prima facie case with respect to the section 30(i) ground, and, as the applicant did not participate in the opposition beyond filing a counter statement, the ground was successful). Section 30(i) oppositions such as these received some Federal Court approval in Canada Post Corp. v. Registrar of Trade-marks et al. (1991), 40 C.P.R. (3d) 221 (F.C.T.D., per Muldoon J.), where the issue of compliance with the provisions of the Canada Post Corporation Act, R.S.C. 1985, c. C-10 was considered in an interlocutory motion dealing with amendments to the statement of opposition. In that case, the opponent was permitted to amend its statement of opposition to refer to non-compliance with that Act, pursuant to a ground of opposition based on section 30(i). An opponent alleging non-compliance with section 30(i) must be careful to adduce sufficient evidence to meet the initial evidential burden. Three subsequent cases involving Canada Post Corporation (see Canada Post Corp. v. Sprint International Communications Corp. (1997), 75 C.P.R. (3d) 39 (T.M.O.B., per Groom); Canada Post Corp. v. U.S. Sprint Communications Co. Ltd. Partnership (1997), 75 C.P.R. (3d) 392 (T.M.O.B., per Martin); and Canada Post Corp. v. Mail Boxes Etc. USA, Inc. (1997), 78 C.P.R. (3d) 82 (F.C.T.D., per Reed J.)) all dealt with oppositions where non-compliance with the Canada Post Corporation Act, supra was alleged, and in all three the opponent failed to meet the initial evidential burden. However, the opponent did meet its evidential burden in Canada Post v. Butterfield, supra, where the Hearing Officer concluded at p. 289 that the opponent had adduced "sufficient evidence from which it could reasonably be concluded that the applicant's use of its mark WEBPOST would

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be in contravention of Section 58 of the Canada Post Corporation Act". See also Canadian Jersey Cattle Club v. George Weston Ltd. (1991), 38 C.P.R. (3d) 113 (T.M.O.B., per Partington), which dealt with the registrability of the trade-mark NEILSON JERSEY MILK for milk. The opponent alleged that failure to comply with the Consumer Packaging and Labelling Act, S.C. 1970-71-72, c. 41 [now R.S.C. 1985, c. C-38] meant that the application did not comply with section 30(i) of the Act. The Hearing Officer doubted whether the opponent’s onus to adduce facts to support these allegations had been met. In any event, the applicant rebutted this allegation with a letter from the Consumer and Corporate Affairs Department, accepting the proposed brand name, resulting in the failure of that ground of opposition. In Dairy Farmers of Canada v. Hunt-Wesson, Inc. (2000), 8 C.P.R. (4th) 20 (F.C.T.D., per Nadon J.), aff’d (2001), 15 C.P.R. (4th) 244 (F.C.A., per Noël J.A.), the Dairy Farmers of Canada opposed the registration of the trade-mark GOUT DE BEURRE COMME AU CINEMA, referring to guidelines set by Industry Canada prohibiting the use of the term “butter”, subject to certain exceptions. However, this submission failed to persuade the Court since the guidelines were not mandatory, but simply “recommendations and suggestions”. In these types of cases, the Opposition Board has sometimes taken the position that the applicant should be presumed to have honourable intentions, unless the opposite can be proven. It is not clear how an opponent could meet this onus when the application is based on proposed use. For example, in Cadbury Confectionery Canada Inc. v. Valliant-Saunders (2002), 22 C.P.R. (4th) 388 (T.M.O.B., per Martin) [Cadbury], the opponent introduced evidence from Health Canada on the regulation of hemp and the prohibition of using hemp seeds in food products in an opposition over the CANNABIS CRUNCH trade-mark for chocolate bars “comprised of cannabis seeds”. Despite the evidence, the Hearing Officer held that, since certain types of cannabis seeds are legal, it is reasonable to assume that the applicant will comply with the law. A similar comment on the "presumed honesty" of an applicant is found in Canadian Tire v. CTC Bank of Canada [2005] T.M.O.B. No. 221 (T.M.O.B., per Bradbury), where the Hearing Officer, in considering whether the applicant could be satisfied of its entitlement to use the trade-mark in association with insurance services, suggested that the applicant's intentions were honourable and that it would only use the trade-mark in association with services it was entitled to perform. However, other cases have taken a different approach than the “presumption of innocence” suggested in the Cadbury case, supra. For example, in Interprovincial Lottery Corp. v. Western Gaming Systems Inc. (2002), 25 C.P.R. (4th) 572 (T.M.O.B., per Martin), the Board held that, since the operation of a lottery requires a licence, absent which the services would be contrary to the Criminal Code, R.S.C. 1985, c. C-46, the applicant's failure to show that it had applied for a licence or taken other steps to ensure compliance with the Code was sufficient to find non-compliance with section 30(i). Despite the fact that the application was based on proposed use, the Board held that the opponents made out a prima facie case of potential contravention of the Code, satisfying their

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onus, and the applicant did nothing to meet it, and specifically “it was incumbent on [the applicant] to show that it had at least taken some preliminary steps to comply with the Code” (p. 576). See also Interprovincial Lottery Corp. v. Monetary Capital Corp. (2006), 51 C.P.R. (4th) 447 (T.M.O.B., per Bradbury), where the Board refused a proposed use application for SHOWCASE LOTTO in association with certain electronic lottery games. The opponents’ evidence set out a prima facie case that the applicant was not a party authorized by the Criminal Code to perform gaming or lottery services. The applicant did not file any evidence and, as such, did not satisfy its legal burden. Unlike illegality concerning federal statutes, it is uncertain whether illegality in provincial statutes is a bar to registration. Two cases support the position that illegality in provincial statutes will not prevent registration, and two subsequent cases imply otherwise. In Lubrication Engineers, Inc. v. Canadian Council of Professional Engineers (1992), 41 C.P.R. (3d) 243 (F.C.A., per Hugessen J.A.) [Lubrication Engineers], which involved the trade-mark LUBRICATION ENGINEER, the Federal Court of Appeal disagreed with the Trial Court’s finding that provincial laws governing the engineering profession justified a finding of a section 9(1)(d) prohibition, namely that any word or symbol likely to lead to the belief that the wares or services in association with which it is used have received, or are produced, sold or performed under royal, vice-regal or governmental patronage, approval or authority. The Appeal Court stated at p. 244 that the “text [of section 9(1)(d)] simply does not have the effect, as the judge seemed to think, of importing into federal law the various prohibitions against the use of certain professional designations which are contained in the provincial statutes regulating those professions”. This case was followed in Canadian Council of Professional Engineers v. APA -The Engineered Wood Assn. (1998), 86 C.P.R. (3d) 513 (T.M.O.B., per Herzig), varied (2000), 7 C.P.R. (4th) 239 (F.C.T.D., per O’Keefe J., appeal allowed in part, s. 30(i) not at issue) [The Engineered Wood Assn.], where the opponent also cited the above provincial legislation prohibitions as the grounds for a section 30(i) opposition. Curiously, however, while the Board cited Lubrication Engineers, supra to rebuff the section 9(1)(d) ground, it held that the section 30(i) objection depended upon whether the mark signifies a connection with professional engineers. The Board reasoned that as the 12(1)(b) ground failed, so did the 30(i) ground. One would have thought the Board would have cited and applied the Court of Appeal's 9(1)(d) reasoning to the 30(i) ground as well. However, in a subsequent Federal Court decision, Canadian Council of Professional Engineers v. John Brooks Co. (2004), 35 C.P.R. (4th) 507 (F.C.T.D., per O’Reilly J.) [John Brooks Co.], no mention of Lubrication Engineers, supra or The Engineered Wood Assn., supra was made. Here, use of the word “engineering” in the trade-mark was at issue, and the opponent argued that the public interest and the prevailing law requires that the term “engineering” be used exclusively by professional engineers. A full analysis of the “provincial laws limiting use of that professional description” was made, with the Court deciding

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that the applicant was satisfied that it was entitled to use the word “engineering” under the relevant provincial laws. The judge specifically noted that use of the term "engineering" in a business name is “regulated, not prohibited”. Since the word “engineering” was being used in a way that was held not to be misleading, the argument that the application was contrary to section 30(i) failed. However, the judge went on to find that the proposed trade-mark BROOKS BROOKS SPRAY ENGINEERING was deceptively misdescriptive of the services and persons providing them, since consumers would assume that the particular services at issue would be performed by professional engineers, and the applicant employed “relatively few engineers”. See also Canadian Council of Professional Engineers v. Tekla Oyj (2008), 68 C.P.R. (4th) 228 at 237 (T.M.O.B., per Folz) which followed the reasoning in John Brooks Co., supra to find the component "engineer" of the trade-mark XENGINEER deceptively misdescriptive since "the Applicant is not licensed or registered to provide engineering services in any of the provinces or territories in Canada, nor are any members of the engineering profession in Canada employed by the Applicant". Interestingly, the opponent raised a s. 30(i) ground in this case, but the Hearing Officer did not specifically deal with this ground, beyond stating that the opponent had shown that the term "engineer" is closely regulated. A section 30(i) ground of opposition failed where an opponent sought to rely on the prohibition in the Ontario Medicine Act, S.O. 1991, c. 30 of the use of the designation “physician” by anyone not a member of the College of Physicians and Surgeons of Ontario to oppose an application for PHYSICIAN’S CHOICE for non-medicated skin-care products. The Hearing Officer held that it was not clear that the Act “has any application in the instant case where the term PHYSICIAN is used in the possessive form as a component of a trade-mark for the purpose of identifying the source of wares” (Canadian Medical Association v. Physician’s Choice of Arizona, Inc. (2005), 46 C.P.R. (4th) 214 at 219 (T.M.O.B., per Herzig). This case is also important for the proposition that an opponent seeking to rely on s. 30(i) must plead that the applicant was aware of the fact which the opponent believes disentitles it. In this case, the opponent did not plead that the applicant was aware of the prohibition on the use of the designation “physician”, and so the 30(i) ground of opposition failed for two reasons. In another case, copyright infringement was alleged indirectly, via a ground of opposition based on section 30(i). In E. Remy Martin & Co. S.A. v. Magnet Trading Corporation (HK) Ltd. (1988), 23 C.P.R. (3d) 242 (T.M.O.B., per Martin) [Remy Martin], an argument was made that the design of the applicant’s mark, a centaur design, was an unauthorized copy of an original artistic work in which copyright was owned by the opponent. The opponent therefore argued that the application did not comply with section 30(i), in that the applicant could not have been satisfied of its entitlement to use the trade-mark. The Hearing Officer noted that the opponent’s evidence made out a prima facie case of copyright infringement, and that the applicant had done nothing to rebut that position (the applicant in fact filed no evidence). He stated at p. 246 that “if, in fact, the

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applicant has infringed the opponent’s copyright, then it could not have been satisfied that it was the person entitled to registration of its two applied-for marks”. However, it should be cautioned that the existence of copyright itself is not sufficient to sustain a section 30(i) claim. In Jones v. Dragon Tales Production Inc. (2002), 27 C.P.R. (4th) 369 (T.M.O.B., per Herzig), under section 30(i), the opponent charged that the applicant could not be satisfied that it was exclusively entitled to use the mark because the applicant was not the owner of copyright in a central element of the mark, and that the trade-mark was not distinctive, because the applicant was not the owner of the copyright. Both grounds failed. It was held that a prima facie case of copyright infringement had not been made since too many points of dissimilarity existed and the mere existence of copyright cannot itself prevent a mark from being distinctive. Non-compliance with sections 7(d) and (e) of the Act, dealing with acts of unfair competition, may be considered in an opposition (see Deputy Attorney-General of Canada v. Biggs Laboratories (Canada) Limited (1964), 42 C.P.R. 129 (Ex. Ct., per Dumoulin J.), which involved registration of the trade-mark SHAMMI for a transparent glove. The judge found the trade-mark to be contrary to section 7(d)(i), relating to false and misleading descriptions. The trade-mark was also refused on the basis that it was deceptively misdescriptive, making the section 7(d)(i) comments somewhat superfluous. See also Bio Generation Laboratories Inc. v. Pantron I, Corp. (1991), 37 C.P.R. (3d) 546 (T.M.O.B., per Herzig)). However, this principle has not always been followed (see Canadian Schenley Distillers Ltd. v. Jordan Wines Ltd. (1978), 46 C.P.R. (2d) 74 (T.M.O.B., per Metcalfe), and Moulinsart S.A. v. 9200-2880 Québec Inc. [2008] T.M.O.B. No. 226 (December 8, 2008) (T.M.O.B., per Carrière), where the Hearing Officer held at para. 51 that grounds of opposition "based solely on section 7(b) and (d) of the Act [as opposed to these sections in combination with section 30(i) or 2] do not constitute grounds of opposition within the meaning of section 38(2) of the Act"). In addition to ss. 7(d) and 7(e) of the Act, a violation of s. 22 of the Act (depreciation of goodwill) may be able to sustain an opposition based on non-compliance with s. 30(i). In Parmalat Canada Inc. v. Sysco Corporation (2008), 69 C.P.R. (4th) 349 (F.C.T.D., per Lemieux J.) [Sysco], Parmalat sought leave from the Opposition Board to amend its statement of opposition to rely on section 30(i) in combination with section 22. The Board refused leave to amend on the basis that section 22 is not a proper ground of opposition under section 38(2) of the Act. However, the Court disagreed with the Board's characterization of the issue, stating at p. 362:

The issue before [the Hearing Officer] was not whether on a stand alone basis section 22 of the Act could form the grounds of opposition but rather whether section 38(2)(a) of the Act could have resorted to section 22 of the Act to sustain an opposition on the

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grounds the requirement of section 30(i) were not respected because, in the particular circumstances of this application for the registration of the trade-mark BLACK DIAMOND the applicant for registration Sysco could not have been satisfied that it was entitled to use the trade-mark in Canada in association with the wares described in the application because such use would likely to have the effect of depreciating the value attaching to Parmalat's registered trade-mark BLACK DIAMOND contrary section 22 of the Act.

The Court allowed the judicial review and referred the issue regarding leave to amend the statement of opposition back to the Opposition Board, leaving open the possibility that, in certain instances, a violation of section 22 may be able to sustain a ground of opposition based on non-compliance with section 30(i) of the Act. Non-compliance with section 30(i) can be made to fit a variety of issues involving unauthorized use pursuant to other laws, both common and statute, and certain regulations. This should be kept in mind in drafting a statement of opposition, in order to ensure that all available grounds are canvassed (see Hayhurst, “Trade-mark Oppositions: How “Satisfied” must an Applicant Be?” (1991), 7 I.P.J. 75 for a lucid examination of allegations of non-compliance with other laws, and oppositions based on section 30(i)).

b) Non-registrability Non-registrability refers to the factors set out in section 12(1) of the Act. In an opposition, the most common grounds are section 12(1)(a), that the trade-mark is primarily merely a name or surname; section 12(1)(b), that the trade-mark is clearly descriptive or deceptively misdescriptive; or section 12(1)(d), that the trade-mark is confusing with a registered trade-mark. i) Section 12(1)(a): Surname of an Individual A challenge under section 12(1)(a) first requires a consideration of whether the word sought to be registered is the name or surname of a living individual or an individual who has recently died: “It is when that condition precedent is satisfied, and only then, that consideration need be given to the question of whether the trade-mark applied for is ‘primarily merely’ a name or a surname rather than something else” (Gerhard Horn Investments Ltd. v. Registrar of Trade-marks (1983), 73 C.P.R. (2d) 23 at 30 (F.C.T.D., per Cattanach J.) [Gerhard Horn]).

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The two-pronged test set out in Gerhard Horn, supra has been followed in a number of cases, including Valint N.V. v. Mario Valentino S.p.A. (1999), 4 C.P.R. (4th) 1 (F.C.T.D, per Campbell J.), where the mark MARIO VALENTINO was held to be unregistrable, since the applicant admitted that Mario Valentino was the name of the deceased designer (this admission was sufficient to satisfy not only the first part of the test, but also the second part, presumably because, as a designer, the public would have had knowledge of the name), and Fédération de l’industrie horlogère suisse v. Maytronics Inc. (2005), 44 C.P.R. (4th) 451 (T.M.O.B., per Tremblay), where the mark CALVIN HILL was held to be unregistrable. Another case which purports to follow the test set out in Gerhard Horn, supra is Matol Biotech Laboratories Ltd. v. Jurak Holdings Ltd. (2007), 64 C.P.R. (4th) 195 (T.M.O.B., per Carrière), aff'd (2008), 69 C.P.R. (4th) 321 (F.C.T.D., per Lemieux J.), where the mark KARL JURAK was held to be unregistrable. This case is somewhat perplexing in its application of the "primarily merely" prong of the test, since the Hearing Officer found that the mark KARL JURAK would be viewed in the mind of the average Canadian consumer as "primarily merely" a name, despite the fact that the name did not appear the requisite 25 times in Canadian telephone directories (see discussion below) nor did the evidence establish that the mark KARL JURAK is recognized in Canada as the name of a famous person. Instead, the Hearing Officer appears to have done away with the requirement of common use, knowledge or fame, shifting the onus to the applicant to provide "evidence that would demonstrate that the combination of the given name KARL with the surname JURAK would have in the minds of the average Canadian consumer of the Wares any other meaning than the Wares originate from an individual by the name of Karl Jurak" (p. 205). It remains to be seen whether this reasoning will be followed. The trade-mark itself must also be considered in its entirety. In Gerhard Horn, supra, the trade-mark applied for was MARCO PECCI, and although there was some limited evidence of the existence of an individual with the surname Pecci, there was no evidence that someone had the name Marco Pecci: “The name Marco Pecci cannot be the name of an individual if there be no such person” (p. 32). As there is no impediment to the registration of a fictitious name as such, the mark was held to be registrable. Any addition, however minor, to a name will probably convert the trade-mark from one unregistrable under s. 12(1)(a) to one that is. See, for example, Soldan, supra, where the opposition under s. 12(1)(a) to the trade-mark DR. C. SOLDAN failed because, although there was evidence of two telephone listings for “C. Soldan”, there was no evidence that either of these individuals could be addressed as “Dr.”. Similarly, in Canadian Medical Association v. The Enrich Corporation (unreported) [2004] T.M.O.B. No. 176 (November 22, 2004) (T.M.O.B., per Bradbury), an opposition to the trade-mark DR. BERMAN’S failed because the applicant had disclaimed BERMAN apart from the mark. In Jurak

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Holdings Ltd. v. Matol Biotech Laboratories Ltd. (2007), 64 C.P.R. (4th) 207 (T.M.O.B., per Carrière) [Jurak Holdings], the trade-mark was KARL JURAK 1904-1993. While there was no evidence to rebut the suggestions that the words were a name, the numerical addition prevented the trade-mark from being “primarily merely” a name. A Practice Notice dated August 16, 2000 indicates that an objection under s. 12(1)(a) will generally only be considered if there are at least 25 entries of the name or the surname located in Canadian telephone directories. If there are 25 entries, then a test to determine primary meaning must be applied. According to the test, the examiners must determine what in their opinion would be the response of the general public in Canada to the word. If they consider that a person in Canada of "ordinary intelligence and of ordinary education in English or French" would respond to the word by thinking of it as the name or the surname of an individual who is living or who has died within the preceding thirty years, an objection under s. 12(1)(a) will be raised. For example, in Jurak Holdings Ltd. v. Matol Biotech Laboratories Ltd. (2006), 50 C.P.R. (4th) 337 (T.M.O.B., per Tremblay), an opposition to the trade-mark JURAK under s.12(1)(a) was rejected. The Board held that evidence of 25 telephone listings in Canada of individuals with the surname JURAK did not show it to be a common surname, but rather, a relatively rare surname and that the opponent's evidence did not show that the number of Canadians who would recognize "Jurak" as a surname would be greater than the number who would think of it as an invented word. The Trade-marks Office has recently discussed the possibility of doing away with the condition precedent that there be at least 25 entries of the name or surname in Canadian telephone directories. However, to date, no draft Practice Notice to this effect has been circulated. ii) Section 12(1)(b): Clearly Descriptive or Misdescriptive The question of whether the applicant’s trade-mark is clearly descriptive and thus unregistrable under section 12(1)(b) must be considered from the point of view of the average purchaser of the wares or services covered by the mark. The mark must not be dissected into its component elements and carefully analyzed, but considered in its entirety as a matter of first impression. See Wool Bureau of Canada Ltd. v. Registrar of Trade-marks (1978), 40 C.P.R. (2d) 25 (F.C.T.D., per Collier J.) [Wool Bureau of Canada Ltd.], where an application for the trade-mark SUPERWASH was refused because the Court held that the trade-mark, when applied to particular woolen goods, would be considered by the ordinary person to be clearly descriptive of a garment that washed very well, with little or no resultant shrinkage. The Federal Court has recently found that the word “clearly” in s. 12(1)(b) only applies when one is considering if a mark is descriptive of the character or quality of wares. The decision in Sociedad Agricola Santa Teresa Ltda. et al. v. Vina

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Leyda Limitada (2007), 63 C.P.R. (4th) 321 (F.C.T.D., per Harrington J.) held that, once the Registrar found that the applied for mark for wine was identical to a wine producing region of Chile, the application should have been rejected as being clearly descriptive. It did not matter that the average Canadian consumer may not associate the mark with the geographic origin. This should be contrasted with Rothmans Benson & Hedges Inc. v. Matinée Co. [2008] T.M.O.B. No. 41 (February 13, 2008) (T.M.O.B. per Robitaille) where an opposition to BOURGOGNE for tobacco was rejected. While there was evidence that France produced tobacco, there was no evidence that Bourgogne (or Burgundy) was known for tobacco, or that the public would believe the wares originated in Burgundy. (a) Composite Marks – Descriptive "When Sounded" The registrability of trade-marks that incorporate descriptive words and designs is addressed in both inconsistent Federal Court decisions and a Trade-marks Office Practice Notice. Historically, if a trade-mark contained descriptive words depicted in fancy type, or with additional design elements, the mark could be registered, subject to a disclaimer of the descriptive words. In such a case, the trade-mark was neither clearly descriptive nor non-distinctive. For example, in Fiesta Barbeques Ltd. v. General Housewares Corp. (2003), 28 C.P.R. (4th) 60 (F.C.T.D., per Russell J.) [Fiesta Barbeques], rev’g (2002), 22 C.P.R. (4th) 254 (T.M.O.B., per Partington), the trade-mark included the words GRILL GEAR and design, for barbeque utensils. The design feature was a flame in the letter A in GEAR. Both GRILL and GEAR had been disclaimed. While the Opposition Board held the trade-mark to be clearly descriptive, the Court, on appeal, held that it was not. There was not enough evidence of descriptive use to support that finding. The Court also held at p. 71 that “the verbal components of the subject trade-mark and the flame motif have to be looked at as a whole and clearly give it sufficient distinctive elements to distance it from any terminology a trader might wish to use to describe wares of a similar kind.” The Court also found that the disclaimer of both words was not an admission that the entire trade-mark was not registrable. This has been followed in subsequent Opposition Board decisions (see, for example, Eloyalty Corporation v. Loyalty Management Group (unreported) [2004] T.M.O.B. No. 80 (June 3, 2004) (T.M.O.B., per Bradbury), where the Hearing Officer was “not prepared to treat the applicant’s disclaimers as admissions”). However, a different result arose in Best Canadian Motor Inns Ltd. v. Best Western International, Inc. (2004), 30 C.P.R. (4th) 481 (F.C.T.D., per Gibson J.), aff’g (2002), 23 C.P.R. (4th) 110 (T.M.O.B., per Folz) [Best Canadian Motor Inns]. In that case, the Court, on appeal from the Opposition Board, held that the design elements, which were the addition of a maple leaf to the words written in special type, with lines above and below the words BEST CANADIAN, did not render the trade-mark registrable, since the words, when sounded, were all

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clearly descriptive (and had been disclaimed). Rejecting both the Fiesta Barbeques, supra case, as well as a paper summarizing the descriptiveness analysis when the trade-mark includes design elements, the Court held that the rules of statutory interpretation mandate that the “when sounded” test in section 12(1)(b) applies regardless of whether there is a design incorporated as part of the trade-mark. Following the decision in Best Canadian Motor Inns, supra, the Trade-marks Office issued a Practice Notice, dated February 16, 2005, which describes changes to the examination practice when applying the provisions of section 12(1)(b) of the Act to composite marks. Pursuant to the Practice Notice, the Office will consider that a composite mark, when sounded, is not registrable pursuant to section 12(1)(b) of the Act if it contains word elements that are:

1) clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the wares or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin; and also 2) the dominant feature of the mark.

In determining whether a word element is the dominant feature of a mark, examiners will consider whether a prospective consumer would, as a matter of first impression, perceive the word element as being the most influential or prominent feature of the mark. In doing so, examiners will look at the mark in its totality, and compare the visual impression created by the word element of the mark to the visual impression created by the design element of the mark. Where the design element of the mark does not stimulate visual interest, the word element will be deemed dominant. As at the date of writing, there have not been any oppositions reflecting the approach dictated in that Practice Notice with respect to section 12(1)(b) (as applied to sounded composite marks), so it remains to be seen how the Opposition Board will address oppositions on such grounds moving forward. (b) Combined French and English Marks A trade-mark comprised of a combination of descriptive French and English words will not be considered clearly descriptive or deceptively misdescriptive in the English or French language (see Home Hardware Stores Ltd. v. Canadian Tire Corp. (2006), 51 C.P.R. (4th) 23 (T.M.O.B., per Martin), where an opposition to the trade-mark ARGENT CANADIAN TIRE was rejected). (c) Professional Designations

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A Practice Notice published June 13, 2007 clarifies Trade-marks Office practice with respect to professional designations under section 12(1)(b). The Notice indicates that, when confronted with a mark that appears to be a title of a profession, research will be conducted to determine if this is indeed the case. If the mark is the title of a professional designation, examiners are to apply the first impression test in light of the applicant's wares and/or services (Wool Bureau of Canada Ltd, supra) to determine if a consumer would assume that the wares or services are produced by a professional from that designation, and thus are clearly descriptive. iii) Section 12(1)(c): Generic Trade-marks There are few cases dealing with generic trade-marks, which are unregistrable under section 12(1)(c). Note that, pursuant to this section, a trade-mark is unregistrable if it is the name of the wares or services in any language, whereas section 12(1)(b) focuses on descriptiveness in English or French only. Many practitioners, examiners, and even the Opposition Board and the Courts appear to confuse ‘descriptiveness’ with ‘genericness’. For example, query, in Best Canadian Motor Inns, supra, was MOTOR INNS clearly descriptive of the services, or the name of the services? iv) Section 12(1)(d): Confusion When challenged under s. 12(1)(d), the legal onus is on the applicant to show that, on a balance of probabilities, there is no reasonable likelihood of confusion between the marks at issue. The test for confusion is that set forth in s. 6(2) of the Act, with consideration given to all of the surrounding circumstances, including those specifically set out in s. 6(5). In this analysis, when considering the wares, services and trades of the parties, it is the applicant’s statement of wares and services that govern (see Mr. Submarine Ltd. v. Amandista Investments Ltd. (1987), 19 C.P.R. (3d) 3 (F.C.A., per Thurlow C.J.) and Miss Universe, Inc. v. Bohna (1994), 58 C.P.R. (3d) 381 (F.C.A., per Décary J.A.)). It should be noted that the weight to be given to each factor will depend on the circumstances (Gainers Inc. v. Marchildon et al. (1996), 66 C.P.R. (3d) 308 (F.C.T.D., per Reed J.) and Clorox Co. v. Sears Canada Inc. (1992), 41 C.P.R. (3d) 483 (F.C.T.D., per Joyal J.), aff’d (1993), 49 C.P.R. (3d) 217 (F.C.A., per Mahoney J.A.)). In practice, the Opposition Board will review and weigh evidence pertaining to each of the s. 6(5) factors, making a finding of whether the factor favours the applicant or the opponent. The test is whether, as a matter of first impression in the mind of an average consumer having a vague or imperfect recollection of another mark, the use of both marks in the same area and in the same manner is likely to lead to an inference that the wares associated with those marks are produced or marketed by the same company (Polo Ralph Lauren Corp. v. United States Polo Assn. (2000), 9 C.P.R. (4th) 51 (F.C.A., per Malone J.A.) and Dion Neckware Ltd. v.

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Christian Dior, S.A. (2002), 20 C.P.R. (4th) 155 (F.C.A., per Décary J.A.) [Dion Neckware]). If a determinative conclusion cannot be reached after evaluating all the evidence, then the issue must be decided against the applicant (John Labatt Ltd. v. Molson Companies Ltd. (1990), 30 C.P.R. (3d) 293 (F.C.T.D., per McNair J.), aff’d (1992), 42 C.P.R. (3d) 495 (F.C.A., per Isaac C.J.) [Labatt v. Molson (1990)]). The test is on “the balance of probabilities”, and not “beyond doubt” (Dion Neckware, supra). In TELUS Corp. v. Orange Personal Communications Services Ltd. (2005), 39 C.P.R. (4th) 389 (F.C.T.D., per Mactavish J.), aff’d 2006 F.C.A. 6 (per Décary J.A.), the opponent, who owned a number of FUTURE trade-marks, appealed an Opposition Board ruling allowing the registration of the mark THE FUTURE’S BRIGHT, THE FUTURE’S ORANGE:

The Board’s statement that it was incumbent on Orange “to establish on a balance of probabilities that there would be not reasonable likelihood of confusion between the marks in issue” is awkwardly worded. However, when regard is had to the statement itself, and to the analysis actually carried out by the Board, it is evident that the test applied by the Board was that espoused in the Dion Neckware decision. As a consequence, I am satisfied that the Board correctly identified the standard of proof that Orange had to satisfy in order to be entitled to register the “Future’s Bright” mark. (p. 399)

The Federal Court used the following guide: “it was more probable than not that consumers would not believe that wares or services associated with the 'Future's Bright' mark share the same source as wares or services associated with the 'The Future is Friendly' mark” (p. 400).

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v) Section 12(1)(e)-(j): Prohibited Marks Sections 12(1)(e) to 12(1)(j) prohibit the registration of marks that are contrary to a variety of provisions, including official marks and marks protected under the Olympic and Paralympic Marks Act passed in 2007 or words covered by s.10 (where a mark, by ordinary and bona fide commercial usage, has become recognized in Canada as designating the kind, quality, quantity, destination, value, place of origin or date of production of any wares or services). A section 9 prohibition will not prevent the use of a previously registered trade-mark, or the continued use of a previously used mark (see Royal Roads University v. Canada (2003), 27 C.P.R. (4th) 240 (F.C.T.D., per MacKay J.) and Allied Corp. v. Canadian Olympic Association (1989), 28 C.P.R. (3d) 161 (F.C.A., per MacGuigan J.A.) [Allied Corp.]). For the purposes of section 9(1)(n)(iii), the "public authority" must be a public authority in Canada (see Canada Post Corp. v. United States Postal Service (2005), 47 C.P.R. (4th) 177 (F.C.T.D., per Mactavish J.), aff’d (2007), 54 C.P.R. (4th) 177 (F.C.A., per Sharlow, J.A.)). In See You In - Canadian Athletes Fund Corporation v. Canadian Olympic Committee (2007), 57 C.P.R. (4th) 287 (F.C.T.D.,. per Phelan J.) [See You In], the Federal Court quashed the decision of the Registrar to publish notice of the adoption and use of the marks as official marks by the COC. It held that a mere statement by the public authority that it had adopted and used a mark was not sufficient in itself to prove that such adoption and use had occurred. Instead, a request for publication of an official mark under s. 9(1)(n)(iii) must show evidence of how the mark has been adopted and used, which requires some evidence of public display. As for the issue of whether the COC was a public authority, the Court cited Ontario Association of Architects v. Association of Architectural Technologists of Ontario (2002), 19 C.P.R. (4th) 417 (F.C.A., per Evans J.A.) for the test that, for an organization to be a public authority: (1) there must be a significant degree of public control, and (2) the organization must exist for the public benefit. The Court noted that the test was not an absolute control test, but required a sufficiently significant degree of government control. In this case, the Court affirmed that control does exist, given the cooperation, funding and overall involvement of the government with the COC. The Court further found no reason to conclude that the COC does not exist for the public benefit, even though certain of its actions "such as attempting to take away the Applicant's trade-mark rights" (p. 302) were not beneficial to the public. The finding in See You In, supra that the COC was a public authority avoided further scrutiny on appeal. Despite winning its case, the SYI Fund appealed the Federal Court’s finding that the COC was a public authority under s. 9 of the Act. The appeal was dismissed as “[a] party who has obtained the relief it sought is

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not normally entitled to appeal against the judge's reasons. [The Court saw] no basis for making an exception in this case, however useful to the appellant a ruling in its favour may possibly be in the future” (See You In – Canadian Athletes Fund Corp. v. Canadian Olympic Committee (2008), 65 C.P.R. (4th) 421 at 423 (F.C.A., per Létourneau J.A.). Following the See You In, supra, case, the Trade-marks Office issued a Practice Notice, dated August 22, 2007, confirming that the Office will require evidence of public authority status (referring to the two-part test above), on every request for public notice, and will also require evidence of the adoption and use of the official mark. A "public display" of the mark is required. The Practice Notice indicates that a website reference will suffice, but internal use will not. The public display must show the "mark", and not a descriptive use. And, while there are contradictory cases on this point, the Practice Notice indicates that use by a licensee will not be acceptable. Instead, the evidence must show adoption and use by the public authority. A Federal Court case provides an example of an opponent mounting a s. 12(1)(e) objection pursuant to s. 10. In Scotch Whisky Association v. Glenora Distillers International Ltd. (2008), 65 C.P.R. (4th) 441 (F.C.T.D., per Harrington J.), the opponent, the Scotch Whisky Association, argued that the word GLEN, inter alia, is misdescriptive of the place of origin of the whisky. The applicant, Glenora Distillers, was applying for GLEN BRETON, in association with its whisky produced in Nova Scotia. The Court agreed with the opponent, finding that Canadian consumers have come to associate GLEN with whisky produced in Scotland (e.g. GLENFIDDICH, GLENMORANGIE and GLENLIVET). However, this decision was recently overturned by the Federal Court of Appeal, which directed the Registrar to allow Glenora's application, concluding: "[T]he word 'glen' has not been shown to constitute a mark within the meaning of section 10 of the Trade-marks Act, and therefore cannot be prohibited. Alternatively, even if “glen” could be considered a mark and is prohibited, I find that it does not dominate GLEN BRETON… when that trademark is considered as a whole" (2009 FCA 16 at para. 28 (per Sexton J.A.), leave to appeal refused [2009] S.C.C.A. No. 112 (S.C.C.)). The Court of Appeal went on to say at para. 32 that the Scotch Whisky Association "is essentially seeking to establish a monopoly over a word, which is not inherently descriptive, for a group of traders (namely, its members), when it is not clear that any of the Association’s members incorporated the word into their trademarks for the purpose of designating their whiskies as being from Scotland." Another recent example of a s. 12(1)(e) opposition based on s. 10 can be found in Lamson & Sessions Co. v. Royal Group, Inc. (2008), 69 C.P.R. (4th) 465 (T.M.O.B., per Bradbury) regarding an application to register the colour red applied to a face plate of a junction box in association with electrical junction boxes. The opponent alleged that the mark was not registrable pursuant to ss. 12(1)(e) and 10 of the Act because the colour red "has by ordinary and bona fide

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commercial usage become recognized in Canada as designating… that the electrical junction boxes in association with which it is used are of a kind which is appropriate for fire alarm related applications" (p. 468). The s. 12(1)(e) ground succeeded because the Hearing Officer concluded at p. 473 that "the Opponent's evidence is sufficient to show that the colour red has an accepted meaning in the parties' industry, namely fire alarm related applications".

c) Non-entitlement An opposition on section 16 non-entitlement grounds involves an assessment of the relative priority rights between two allegedly confusing trade-marks, or a trade mark and a trade name. In 2005, the Federal Court of Appeal, in Attorney General of Canada v. Effigi Inc. (2005), 41 C.P.R. (4th) 1 (F.C.A., per Décary J.A.) [Effigi], aff’g (2004), 35 C.P.R. (4th) 307 (F.C.T.D., per Shore J.), issued a decision which fundamentally changed examination procedures. Until this decision, examiners in the Trade-marks Office considered the issue of priority between competing applicants by considering the competing use, filing or convention priority dates. As between two applicants filing on use, as long as both applications were still in examination, the applicant who claimed to have first use would have its application proceed to advertisement, and the later application would be refused. As between two applicants filing on proposed use, the earliest filed application would proceed. As between a proposed use and a use application, the application with the earlier of the filing and use dates would proceed. The Trade-marks Office would make no assessment based on evidence of the use claim. Instead, it would accept that the applicant correctly stated its use. However, the Court in Effigi, supra, disapproved of this practice, and interpreted section 37(1)(c) of the Act to require the Registrar to refuse an application if there was an earlier pending application, regardless of the filing grounds. That section reads:

37. (1) The Registrar shall refuse an application for the registration of a trade-mark if he is satisfied that … (c) the applicant is not the person entitled to registration of the trade-mark because it is confusing with another trade-mark for the registration of which an application is pending

Accordingly, now, if an applicant files on the basis of proposed use or use, and another applicant subsequently files on the basis of earlier use, the second applicant, ostensibly with the earlier priority date, will be in the position of having to oppose, but can do so on non-entitlement grounds. In a Practice Notice dated

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May 19, 2005, the Trade-marks Office indicated its adoption of the approach taken in Effigi, supra. The key difference between an opposition under section 12(1)(d) and one under section 16 is the material dates, depending on the ground of filing (see discussion on material dates, below). Otherwise, the confusion analysis is the same and the Opposition Board will frequently come to the same conclusion for a ground of opposition under s. 16 as for a s. 12(1)(d) ground, on the condition that the difference in material dates is not material to the decision (it generally is not material and both analyses, if conducted, will tend to arrive at the same outcome). Each party to the opposition must keep the definitions of "use" of a "trade mark" in mind where entitlement claims are made. Whether there is proper "use", under s. 4, by the opponent or its licensees can be scrutinized, just as the applicant's claims will be. If an opponent's evidence on its own position is faulty, it may not meet the necessary evidentiary burden to shift the onus of showing entitlement to the applicant. For example, s. 4(1) of the Act specifies that a trade-mark is deemed to be used in association with wares if, at the time of transfer, it is marked on the wares themselves or on the packages in which they are distributed or it is in any other manner so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred. This section has been interpreted to mean that the mark must come to the attention of the transferee in a direct way at the time of transfer (Syntex Inc. et al. v. Apotex Inc. (1984), 1 C.P.R. (3d) 145 at 151 (F.C.A., per Stone J.)). This does not mean that the trade-mark must appear on the wares or the packages per se. For example, the appearance of the trade-mark on certain advertising and promotional material might be sufficient (see, for example, General Mills Canada Ltd. v. Procter & Gamble Inc. (1985), 6 C.P.R. (3d) 551 (T.M.O.B., per Troicuk), where use of the advertising slogan BAKE SOMEONE HAPPY on coupons and shelf talkers was held to be use in association with cake mix). For the purpose of establishing use in association with computer software, where the mark appears on the computer screen when the software is used, it is sufficient that the mark be seen both before the software is purchased, through demonstrations to potential buyers, and after purchase, when the buyer makes use of the software (see BMB Compuscience Canada Ltd. v. Bramalea Ltd. (1988), 22 C.P.R. (3d) 561 (F.C.T.D., per Teitelbaum J.)). Even when the trade-mark is marked on the wares themselves, if the mark is not visible at the time of transfer, this will not be deemed to be use in association with wares. For example, recently, in the case of Georgia-Pacific Consumer Products LP v. Kruger Products Ltd. [2008] T.M.O.B. No. 195 (November 3, 2008) (T.M.O.B., per Bradbury), the opponent's s. 16(3) ground of opposition failed because the opponent could not establish use of its Wallpaper Design

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mark (which was embossed directly on its bathroom tissue), since the trade-mark was not visible through the packaging (see also Re Fort James Operating Co (2008), 73 C.P.R. (4th) 15 (T.M.O.B., per Bradbury), the corresponding s. 45 proceeding, where the registrant's (opponent's) marks were expunged for the same reason that its s. 16(3) ground of opposition failed, namely, the marks were not visible through the packaging). However, the Hearing Officer concluded the following at para. 58 regarding the opponent's distinctiveness ground of opposition:

I do not consider it necessary for the Opponent to demonstrate use of its mark in accordance with s. 4 of the Act in order for it to succeed under its distinctiveness ground of opposition. It seems fair to accept that the appearance of the Opponent's Mark on its wares may have resulted in an acquired reputation in Canada, even though the Opponent's Mark may not be seen until the consumer opens the packaging after purchase.

d) Non-distinctiveness A trade-mark may be non-distinctive for several reasons: it is confusing with a previously used trade-mark or trade name or a registered trade-mark; it is clearly descriptive or generic, and thus not a trade-mark, and thus cannot distinguish any one; or it is a term that has developed a trade meaning (as in s. 10). In most oppositions, the ground relates to confusion with the trade-mark of the opponent, and/or others. In order to succeed on the ground of lack of distinctiveness referring to the trade-mark of another, it is not necessary to show that such trade-mark or trade name has become “well known” in Canada in the technical sense of section 5 of the Act. Rather, “it is sufficient to establish that [the opponent’s mark] has become known sufficiently to negate the distinctiveness of the mark under attack” (Motel 6, Inc. v. No. 6 Motel Ltd. et al. (1981), 56 C.P.R. (2d) 44 at 58 (F.C.T.D., per Addy J.). In this case, the court found that, because of the established goodwill and reputation the plaintiff had developed in Canada and maintained throughout the relevant timeframe, the plaintiff’s name, mark and logo had become known through sections of British Columbia. As a result, the defendant’s mark was not distinctive of its services. The Federal Court clarified the appropriate test for this ground in Bojangles’ International, LLC v. Bojangles Café Ltd. (2006), 48 C.P.R. (4th) 427 at 444 (F.C.T.D., per Noël J.): “A mark must be known to some extent at least to negate the established distinctiveness of another mark, and its reputation in Canada should be substantial, significant or sufficient” enough to negate the distinctiveness of the applicant's trade-mark."

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Non-distinctiveness and confusion under ss. 12(1)(d) or 16 are related, since, if the applicant’s mark is found to be confusing with that of the opponent, it cannot, by definition, be found to be distinctive of the applicant. It is perhaps no surprise, then, that a majority of oppositions based on confusion also include a ground of opposition based on non-distinctiveness. And, as is the case with confusion, non-distinctiveness may be shown by reference to the marks of third parties. Thus, in Credit Union Central of Canada v. Community Credit Union Ltd. (2005), 48 C.P.R. (4th) 226 (T.M.O.B., per Bradbury), the Board, in its discussion of the distinctiveness ground of opposition, stated at 237 that “the opponent may rely on its evidence of use of the words COMMUNITY CREDIT UNION by third parties, even though such parties were not identified in the statement of opposition”.

2) Relevant Dates The question of the relevant date is critical to both the grounds of opposition and the evidence that can be filed by the parties in an opposition. Furthermore, the ability of an opponent to amend its application to add a new ground of opposition is affected by whether the relevant date for that ground is the application date, the date of the statement of opposition, or the hearing date. The Act and cases make it clear that there are, in fact, several relevant dates, which depend upon the specific ground of opposition. As noted above, there are four grounds of opposition:

(i) non-compliance with section 30; (ii) non-entitlement; (iii) non-registrability; and (iv) non-distinctiveness.

Each of these grounds has a relevant date, which is the last date on which evidence relating to that issue will be considered admissible.

a) Section 30 The most common grounds of opposition pertaining to section 30 are found in subsections (a) that the wares or services are not in ordinary commercial terms, (b) that the trade-mark has not been used since the date of first use alleged, or not at all, and (i) that the applicant cannot have been satisfied that it was entitled to use the trade-mark.

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i) Section 30(a) Technically, the material date for assessing compliance with section 30(a) (wares and services in ordinary commercial terms) is the filing date of the application (see Delectable Publications Ltd. v. Famous Events Ltd. (1989), 24 C.P.R. (3d) 274 (T.M.O.B., per Martin) [Delectable Publications]).. However, the Trade-marks Office will permit parties to amend wares and services even during opposition proceedings, so that the more relevant date to assess this issue appears to be the date of the hearing, or decision on the issue (see Eaton Williams (Millbank) Ltd. v. Nortec Air Conditioning Industries Ltd. (1982), 73 C.P.R. (2d) 70 (T.M.O.B., per Partington), cited in Delectable Publications, supra, where it was noted that an amendment after filing to meet the requirements of the Act, as might be requested by an Examiner, ought not to be held against an applicant). That makes sense, since probably more than 70% of all applications are amended after filing to provide further particulars of wares or services. It would be ludicrous to say that all of these applications are fatally flawed. ii) Section 30(b) With respect to section 30(b) (date of first use), the Opposition Board has now held on several occasions that the relevant date for arguments about use or non-use of a trade-mark is the filing date of the application (see, for example, Labatt v. Molson (1990), supra, David Grains Enterprises Inc. v. Forsyth Trading Co. (1991), 37 C.P.R. (3d) 369 (T.M.O.B., per Martin), and Star Shipping A/S v. Starship Transportation Inc. (1996), 70 C.P.R. (3d) 373 (T.M.O.B., per Herzig)). iii) Section 30(e) The same considerations apply to an opposition based on non-compliance with section 30(e) (regarding intent to use a mark) as to section 30(b), discussed above, regarding onus and burden of proof, and relevant dates, namely the filing date of the application (see Canadian National Railway Co. v. Schwauss (1991), 35 C.P.R. (3d) 90 (T.M.O.B., per Herzig), which followed Labatt v. Molson (1990), supra. . iv) Section 30(i) With respect to section 30(i), that is whether the applicant is satisfied of its right to use the trade-mark, the relevant date is the date of filing (see Canadian Olympic Association v. Les Methodes Sportives Gaetan Menard Inc. (1987), 15 C.P.R. (3d) 544 (T.M.O.B., per Troicuk). See also Remy Martin, supra). This seems reasonable, since, if an applicant is not satisfied of its right to proceed, then the application seems fatally flawed from the beginning.

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b) Entitlement The relevant dates for entitlement are clearly set out in section 16 of the Act. Either the filing date, for applications based on proposed use and use and registration abroad, or the date of first use or making known, where the application is based upon either use or making known, will be relevant, unless a convention priority claim is also made (see, for example, Gillette Co. v. Esselte Pendaflex Canada Inc. (1991), 39 C.P.R. (3d) 276 (T.M.O.B., per Herzig), Kayser-Roth Corp. v. William H. Kaufman Inc. (1991), 36 C.P.R. (3d) 256 (T.M.O.B., per Martin) and Metro-Goldwyn-Mayer Inc. v. Stargate Connections Inc. (2004), 34 C.P.R. (4th) 317 (F.C.T.D., per Simpson J.) (the relevant date for assessing confusion with respect to s. 16(1) ground of opposition is the date of first use claimed in the application); Masterpiece Inc. v. Alavida Lifestyle Inc. (2008), 72 C.P.R. (4th) 160 (F.C.T.D., per O'Reilly J.) (the relevant date for assessing confusion with respect to s. 16(3)(a) is the date of filing of the application); and Weetabix, supra, where the Court held that any evidence subsequent to the priority date (in this case, the filing date for the proposed use application for FRUIT DOTS) would not be admitted on the issue of entitlement.) This can lead to interesting results. For example, while an opponent cannot have abandoned a mark relied upon in an opposition when it drafts and files its opposition (s. 17(1)), subsequent abandonment will not be held against it where entitlement is the relevant ground of opposition (see ConAgra, Inc. v. McCain Foods Ltd. (2001), 14 C.P.R. (4th) 288 (F.C.T.D., per Blais J.), where section 16(3) grounds of opposition based on confusion with the opponent’s previously filed applications were considered, despite the fact that these applications had been abandoned by the hearing date). In another interesting case, Neighbourhood Toy Stores of Canada v. Educator Supplies Ltd. [2007] T.M.O.B. No. 150 (October 11, 2007) (T.M.O.B., per Folz), the opponent's entitlement ground of opposition succeeded, while its distinctiveness ground failed because "the Applicant's circumstances [had] changed significantly between the material date for assessing the issue of entitlement (i.e. the applicant's date of first use) and the material date for assessing the issue of distinctiveness (i.e. the date of filing the statement of opposition)…. By the later material date, the Applicant's mark had become known to a much larger extent across Canada than the Opponent's mark and name" (para. 46 – emphasis in the original). While the Hearing Officer concluded that the entitlement ground should succeed, since the applicant had "failed to meet the legal burden upon it to show that, on a balance of probabilities, confusion between the marks was unlikely as of the applicant's date of first use" (para. 42 – emphasis in the original), due to the fact that there was no evidence of actual confusion despite over four years of co-existence in Canada, the Hearing Officer concluded at para. 49 that the distinctiveness ground of

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opposition should fail, since "as of the filing date of the statement of opposition, the Applicant's Mark distinguished its wares and services from those of the Opponent" (emphasis in the original).

c) Registrability This issue most frequently arises in oppositions with respect to an allegation of confusion with a registered trade-mark (section 12(1)(d)), but there are also cases considering descriptiveness (section 12(1)(b)) and failure to comply with section 9 or 10 (section 12(1)(e)). i) Section 12(1)(d) The relevant date for determining confusion with a registered trade-mark was originally considered to be the date of filing the statement of opposition. However, since the decision in Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413 (F.C.A., per Desjardins J.A.) [Park Avenue], the relevant date has been the date when the matter is disposed of. The decision of the Registrar or the Court should be “taken on an accurate state of the record. Registrability should be decided at the date of registration or at the date of refusal of registration” (Park Avenue, supra at 424). Accordingly, if any trade-mark relied upon by the registrant in its statement of opposition is expunged or cancelled during the proceedings, it will not be considered in the Opposition Board’s decision on section 12(1)(d) (see, for example, Wallace International Silversmiths, Inc. v. Stanley Roberts, Inc. (2005), 49 C.P.R. (4th) 157 (T.M.O.B., per Bradbury)). However, if the opponent also relied upon non-entitlement, or lack of distinctiveness, the mark might still be relevant. For an interesting decision on relevant dates, see Everlast World’s Boxing Headquarters Corporation v. Amethyst Investment Group, Inc. (2004), 33 C.P.R. (4th) 307 (F.C.T.D., per Pinard J.), where an opponent relied upon a registration that was ordered by the Trade-marks Office to be expunged under section 45 prior to the opposition decision, although the expungement was not finalized until after the opposition decision. On appeal, Pinard J. held, without discussing relevant dates, that there could be no confusion with an expunged trade-mark. ii) Section 12(1)(b) For oppositions relying upon non-registrability based on section 12(1)(b) descriptiveness grounds, it is apparently the application filing date that should be considered. There has been some debate on this issue. For example, in Lubrication Engineers, supra, dealing, inter alia, with a descriptiveness (section 12(1)(b)) attack on an application, it was held that the Registrar wrongly considered the

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filing date to be the relevant date for considering descriptiveness in the opposition, and suggested that it is the hearing date which is relevant. Some subsequent cases have followed Lubrication Engineers, supra (see, for example, Apotex Inc. v. Glaxo Group Ltd (unreported) [1999] T.M.O.B. No. 105 (May 19, 1999) (T.M.O.B., per Herzig), Wal-Mart Stores, Inc. v. Tough Stuff Distributors, Inc. (1999), 1 C.P.R. (4th) 271 (T.M.O.B., per Folz), and Pillsbury Co. v. Alantra Imports Co. (1999), 1 C.P.R. (4th) 252 (T.M.O.B., per Partington)).

However, more recent Federal Court and Opposition Board decisions have distanced themselves from that position. The practice of the Opposition Board is now to consider the application filing date as the relevant date. In Fiesta Barbeques, supra, the judge, in overturning the Opposition Board's decision, was conscious of the ruling in Lubrication Engineers, supra, but declared the comments there to be obiter dicta, and instead relied upon an old line of cases, including a Supreme Court of Canada decision, Lightening Fastener Co. v. Canadian Goodrich Co., [1932] S.C.R. 189 (per Anglin C.J.C.) [Lightening Fastener], to come to the conclusion that the relevant date is the date of filing. Havana Club Holding S.A. v. Bacardi & Co. (2004), 35 C.P.R. (4th) 541 (T.M.O.B., per Carrière) (for the mark OLD HAVANA), followed the appeal decision in Fiesta Barbeques, supra, and further emphasized that it made more sense to have the relevant date for section 12(1)(b) and its “saving” provision in section 12(2) be the same, namely, the date of the application. (See also Havana Club Holding S.A. v. Bacardi & Co. (2004), 35 C.P.R. (4th) 559 (T.M.O.B., per Carrière), decided the same day for the mark HAVANA SELECT, and Canadian Council of Professional Engineers v. Management Engineers GmbH (2004), 37 C.P.R. (4th) 277 (T.M.O.B., per Herzig), in which there is a spirited argument regarding the relevant date, disputing the earlier Fiesta Barbeques, supra analysis of which decisions were made based on obiter dicta findings. The Hearing Officer went so far as to state at p. 283: “While I find that there is much merit to counsel’s arguments, I cannot say unequivocally that the Board in Zorti Investments [see below] … was clearly wrong in adopting the date of filing of the application as the material date in respect of s. 12(1)(b)”.) No reference to the debate was made in the Federal Court decision in Shell Canada Limited v. P.T. Sari Incofood Corporation (2005), 41 C.P.R. (4th) 250 (F.C.T.D., per MacKay D.J.), rev'd (2008), 68 C.P.R. (4th) 390 (F.C.A., per Noël J.A.- the relevant date was not addressed), leave to appeal refused [2008] S.C.C.A. No. 486 (S.C.C.) [Shell], which cited Fiesta Barbeques, supra and Lightening Fastener, supra for the proposition that the relevant date for assessing the registrability of a trade-mark pursuant to section 12(1)(b) is the filing date of the application. A number of recent Opposition Board decisions have followed the Shell, supra decision.

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iii) Section 12(1)(a) Several recent Opposition Board decisions have held that the material date for deciding a s. 12(1)(a) ground of opposition is also the filing date of the application (see, for example, Calvin Klein Trademark Trust v. Wertex Hosiery Inc. (2004), 41 C.P.R. (4th) 552, and Jurak Holdings Ltd. v. Matol Biotech Laboratories Ltd. (2006), 50 C.P.R. (4th) 337 (T.M.O.B., per Tremblay)). iv) Section 12(1)(e) Registrability issues pertaining to sections 9 and 10 are determined as of the date of the hearing or decision (see Allied Corp., supra, which has been followed in Canadian Olympic Assn. v. Olympus Optical Co. (1991), 38 C.P.R. (3d) 1 (F.C.A., per Stone J.A.). See also Ontario Federation of Anglers and Hunters v. F.W. Woolworth Co. (1991), 39 C.P.R. (3d) 272 (T.M.O.B., per Martin) and Sealy Canada Ltd. v. Simmons I.P. Inc. (2005), 47 C.P.R. (4th) 296 (T.M.O.B., per Folz), in which section 9 notices published after the applicant’s date of first use or the statement of opposition were considered relevant to the issue of registrability). v) Sections 12(2) and 14 Under section 12(2), the statute makes it clear that the applicant must show acquired distinctiveness as of the filing date of its application. Therefore, for trade-marks relying on section 12(2), the filing date, rather than the hearing date, is relevant (Molson Breweries, a Partnership v. John Labatt Ltd. (2000), 5 C.P.R. (4th) 180 (F.C.A., per Rothstein J.A.) [Molson v. Labatt (2000)]). Similarly, for applications relying upon section 14 to overcome a descriptiveness objection, the Opposition Board has held that the application filing date should be the relevant date. In Zorti Investments Inc. v. Party City Corporation (2004), 36 C.P.R. (4th) 90 (T.M.O.B., per Martin), the Hearing Officer reviewed the cases on section 12(1)(b), and held at p. 96 that to use a later date “would be not only logically inconsistent but would appear to unfairly advantage a foreign applicant over a domestic applicant who must evidence that his clearly descriptive mark has become distinctive as of the filing date of the application”. In that case, the applicant did not succeed, and its section 14 claim was unsuccessful since the United States registration upon which it relied did not issue until after the filing date of the application. A similar result was reached in A. Lassonde Inc. v. Citrus World, Inc. (2004), 42 C.P.R. (4th) 348 (T.M.O.B., per Carrière), where the opposition included non-distinctiveness grounds. The applicant had relied upon section 14 to overcome a descriptiveness objection during prosecution. However, the applicant’s foreign registration did not issue until after the application was filed.

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d) Distinctiveness The relevant date for determining distinctiveness is the date of the original or amended statement of opposition (see Re Andres Wines Ltd. and E. & J. Gallo Winery (1975), 25 C.P.R. (2d) 126 (F.C.A., per Thurlow J.) [Andres Wines]). While the date of the statement of opposition has traditionally been the relevant date when considering the issue of distinctiveness, in 1994, Mr. Justice Denault, in Clarco Communications Ltd. v. Sassy Publishers Inc. (1994), 54 C.P.R. (3d) 418 (F.C.T.D.) [Clarco Communications], followed a more recent Court of Appeal case to find that the relevant date for all opposition issues, including distinctiveness, was the date of the decision. The same judge relied upon his own decision in Automobile Club de l’Ouest de France (ACO) v. Bridgestone/Firestone Inc. (1995), 62 C.P.R. (3d) 292 (F.C.T.D., per Denault J.) [Bridgestone/Firestone] on this issue again. The Opposition Board has refused to follow the decisions in Clarco Communications, supra and Bridgestone/Firestone, supra, adopting instead the date of the original or amended statement of opposition as the relevant date for determining distinctiveness (see Molson Breweries, a Partnership v. Swan Brewery Co. (1994), 58 C.P.R. (3d) 303 (T.M.O.B., per Partington); Hume Publishing Co. Ltd. v. Successful Money Management Seminars, Inc. (1995), 65 C.P.R. (3d) 117 (T.M.O.B., per Herzig); Cellular One Group, a Partnership v. Brown, now standing in the name of Bell Mobility Cellular Inc. (1996), 69 C.P.R. (3d) 236 (T.M.O.B., per Martin); BAB Holdings, Inc. v. The Big Apple Ltd. (2002), 16 C.P.R. (4th) 427 (F.C.T.D., per McKeown J.); and Advance Magazine Publishers Inc. v. Casciato (unreported) [2004] T.M.O.B. No. 71 (April 14, 2004) (T.M.O.B., per Bradbury)). The Board’s view has been supported by American Assn. of Retired Persons v. Canadian Assn. of Retired Persons (1998), 84 C.P.R. (3d) 198 (F.C.T.D.), where Reed J., in following Andres Wines, supra, reviews the case law and finds that Denault J.’s position has not been followed by any other Federal Court. (N.B. – in Molson v. Labatt (2000), supra the Federal Court of Appeal commented on the Andres Wines, supra, finding regarding the relevant date as being only obiter dicta, possibly opening the door for further arguments about which date is relevant.) An apparent exception to the assessment of distinctiveness as of the filing of the statement of opposition is where an applicant has relied upon section 12(2) to support its application, which requires it, as discussed above, to show that its trade-mark is distinctive as of the filing date. Also, while the relevant date in a non-distinctiveness challenge is generally the filing date of the statement of opposition, there seems to be a willingness on the part of the Opposition Board and the Courts to make an exception if assessment at that time would lead to an inconsistent result with another ground of opposition. In Humpty Dumpty Foods Ltd. v. George Weston Ltd. (1989), 24

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C.P.R. (3rd) 454 (F.C.T.D., per Martin J.), the opponent filed an application for AMIGO for snack food several weeks after the applicant filed an application for AMIGOS in association with similar wares. The opponent's application was refused on the basis that it was not the person entitled to registration based on its later filing date. By the time the opponent filed an opposition against the applicant's mark on the basis of non-distinctiveness, it had made its mark known. Because the relevant date for assessing non-distinctiveness is the filing date of the opposition, and by that time, the applicant's mark was non-distinctive in light of the opponent's use of its mark, the Opposition Board refused the application. Justice Martin reversed the Board's decision on appeal, stating at p. 461:

As I see the statement of opposition, it alleges… that the [applicant's] proposed mark is not distinctive but in support of that conclusion it alleges facts which support a conclusion that the [applicant's] application should not be allowed because the allowance of the [applicant's] proposed trade mark application would cause confusion with the almost identical proposed trade mark of the [opponent]. In that the [opponent's] allegations of fact raised the issue of confusion rather than distinctiveness, the material date for the determination of that issue is the date on which the [applicant] filed its application [as opposed to the date on which the opponent filed its opposition].

The same type of reasoning was applied in Métro Richelieu 2000 Inc. v. Loblaws Inc. [2009] T.M.O.B. No. 24 (February 11, 2009) (T.M.O.B., per Carrière), where the opponent based its opposition to the mark LE PANIER LE MOINS CHER on, among other grounds, descriptiveness and non-distinctiveness. The Opposition Board held that, even if the trade-mark had become distinctive by the date of filing the opposition, the trade-mark was clearly descriptive. The Hearing Officer noted, in obiter, at para. 30:

… I have some reservations about using the filing date of the statement of opposition as the relevant date for analyzing the ground of opposition based on non-distinctiveness when the trade-mark has been deemed to be clearly descriptive of one of the qualities of the wares or services at the filing date of the application for registration.

3) Pleading all Relevant Grounds An opponent must set out all of the grounds upon which it wishes to rely in its statement of opposition. If a particular ground is not claimed, it may be difficult for an opponent to later argue that the application ought to be refused on that ground.

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An opposition commonly takes at least three years, from filing the statement of opposition to decision, and can take much longer. The facts upon which a party wishes to rely in an opposition may fluctuate throughout the proceedings. During that time, trade-marks may be cancelled or expunged, new marks may issue to registration or be published for opposition, and the extent and nature of use may change, making it vital for the parties to keep on top of the proceedings, and to make sure all relevant grounds of opposition have been pleaded and all relevant evidence has been filed.

a) Can Opposition Board Only Decide Opposition on the Basis of Pleadings? Normally, the Opposition Board will not make decisions based on grounds of opposition not pleaded (see Practice Notice dated November 8, 2006, replaced by a notice entitled "Practice in Trade-mark Opposition Proceedings", in effect as of March 31, 2009 (which does not specifically deal with this point), and Imperial Developments Ltd. v. Imperial Oil Limited (1984), 79 C.P.R. (2d) 12 (F.C.T.D., per Muldoon J.), where the Court ruled that it was not within the jurisdiction of the Opposition Board to decide an opposition on grounds not pleaded in the statement of opposition. See also Molson v. Schlossbrauerei Kaltenberg, supra, Novopharm Ltd. v. Astra Aktiebolag (2000), 6 C.P.R. (4th) 101 (T.M.O.B., per Martin), aff'd (2001), 15 C.P.R. (4th) 476 (F.C.T.D., per Kelen J.), aff'd (2003), 24 C.P.R. (4th) 326 (F.C.A., per Stone J.A.), and Arden Holdings Inc. v. DCNL, Inc. (unreported) [2002] T.M.O.B. No. 84 (June 6, 2002) (T.M.O.B., per Martin) [Arden Holdings]). However, if the evidence and argument make it clear that a ground is being relied upon, even if not properly pleaded, and especially where the applicant responds to the argument, the Registrar should consider the ground (see Coastal Culture, supra).

b) Parties Cannot Raise New Grounds of Opposition Except Pursuant to Pleadings

Occasionally, evidence may come to light during the course of an opposition, suggesting that additional grounds of opposition may be relevant. For example, when compiling the opponent’s evidence, it may be apparent that an opponent uses a certain word or phrase as both a trade-mark and a trade name. If prior use of a confusing trade name was not originally relied upon, the statement of opposition ought to be amended, rather than simply attempting to rely on this ground in argument or at the hearing (see “Amending Statements of Opposition”, below).

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An opponent should be careful, both in initially drafting the statement of opposition and when reviewing the evidence of the opponent and that of the applicant, to carefully consider whether all available grounds of opposition have been included. Failure to do so may result in the opponent waiving its right to rely on a useful or pertinent argument (see Arden Holdings, supra, where the opponent was not permitted to advance an argument of non-distinctive use since it had not pleaded such a ground in its statement of opposition).

4) Grounds Must be Pleaded to Sufficiently Permit an Applicant to Reply

a) The Grounds of Opposition must be Pleaded Completely As stated in section 38(3)(a) of the Act, the statement of opposition must contain “the grounds of opposition in sufficient detail to enable the applicant to reply thereto.” An applicant needs to know the case it must meet. The evidentiary burden and legal onus on an applicant in an opposition is considerable, and it cannot meet these obligations if it does not know what the opponent’s case is about. For that reason, an opponent must set out enough detail in its statement of opposition to permit an applicant to clearly understand both the specific arguments against it, and the basis for the opponent’s position. Obviously, it is at the evidentiary stage that the facts relied upon by both parties must be introduced. The opponent should not be required, in its statement of opposition, to set out all the facts relied upon. At the same time, the nature of the case should be easily identified, so an applicant can make an informed decision about whether to proceed. Once a statement of opposition is filed, the Opposition Board will review it to ensure that there is at least one validly pleaded ground. The Board does not go beyond that. It is then up to the parties to proceed with the grounds as drafted.

b) Timing for Challenge to Sufficiency of Pleadings Traditionally, parties raised issues regarding the sufficiency of pleadings in their written arguments. In fact, until recently, the Trade-marks Office practice was to advise parties that it could not rule on pleadings issues until after all evidence and written arguments had been filed – i.e. in the final decision. However, that may be too late for an applicant who has failed to understand or appreciate the opponent’s case. The Federal Court of Appeal criticized this in Novopharm Ltd. v. Ciba-Geigy Canada Ltd.; Novopharm Ltd. v. Astra Aktiebolag (2001), 15 C.P.R. (4th) 327 at 338 (F.C.A.),where it stated:

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The Registrar seems to have adopted the practice of considering the sufficiency of the statement of opposition not as an interlocutory matter, but in conjunction with a consideration of the merits of the opposition. This practice not only runs the risk that the Registrar’s decision on the procedural matter will be contaminated by the evidence in the record that was not available at the time the statement of opposition was filed, but it also seems strikingly inefficient…. The sufficiency of pleadings should, in our view, be determined on an interlocutory basis. Possible amendments with leave under s. 47 of the Act and s. 40 of the Regulations may then be open to the parties prior to evidence.

In 2006, the Opposition Board implemented an interlocutory ruling procedure whereby applicants can object to pleadings in a statement of opposition. The Opposition Board will only consider objections regarding statements of opposition (and not counter statements, evidence or written submissions) and will only do so if the objection is made before the counter statement is submitted (see "Practice in Trade-mark Opposition Proceedings", in effect as of March 31, 2009). Objections can be made by letter to the Trade-marks Office following the receipt of the statement of opposition, and should identify the specific objections to any particular grounds. The Trade-marks Office follows up with a letter to the opponent, confirming that objections have been raised, and in some cases, indicating that the pleadings will be struck unless a response is filed. The opponent is given a defined period of time within which to respond. Other deadlines, for example, for filing a counter statement, continue to run during this term, and applicants should be careful to request any necessary extensions of time, pending finalization of the grounds of opposition. The Practice Notice specifies that once the opponent's Rule 41(1) evidence has been filed, issues regarding the opponent's pleadings will only be considered at the decision stage (see Novopharm Limited v. AstraZeneca AB (2002), 21 C.P.R. (4th) 289 (F.C.A., per Rothstein J.A.) [Novopharm (2002)]). This raises an interesting conundrum for applicants. What if the statement of opposition is improperly drafted, and this error might be useful in defeating the opposition? Ought an applicant hold this in reserve for argument, or raise it at the very beginning, thereby permitting an opponent to rectify the situation? In the writer’s view, deficiencies ought to be raised initially by letter filed either before the counter statement is filed, or with the counter statement, or by requesting an interlocutory ruling to strike all or any portion of the opponent’s pleading (see discussion below of Novopharm (2002), supra and the Practice Notice of March 31, 2009). This view is also reflected in the Board’s decision in

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Governor and Co. of Adventurers of England trading into Hudson’s Bay v. Sears Canada Inc. (2002), 26 C.P.R. (4th) 457 (T.M.O.B., per Folz), where the applicant argued at p. 466 that the following opposition ground was not sufficiently pleaded:

The trade-mark is not registrable in that, contrary to s. 12(1)(b), it is clearly descriptive of the character or quality of the wares or services in association with which it is used or proposed to be used.

The applicant argued that this was insufficiently detailed to enable it to respond to the allegation, as there were no allegations of fact to support the bald repetition of the language of s. 12(1)(b). It was held that if the applicant had not raised the issue in its counter statement, but had proceeded with evidence and argument, this might have shown that it understood the case to be met. Since the applicant had raised the issue of insufficient detail in its counter statement and accompanying correspondence, it was up to the opponent to correct the deficiency. The opponent did not, and thus the Hearing Officer found that the ground could not be considered. Folz further indicated that if the ground had been sufficiently pleaded, it would have succeeded with respect to services. It also seems that where an opponent improperly pleads, but a counter statement is filed in response, the applicant will be presumed to have understood the issues. In such cases, the Opposition Board on its own is unlikely to reject any of the opposition grounds (see World Wrestling Federation, supra). Also, the Board has stated, when accepting technically deficient affidavits and exhibits, part of its reasoning is that it is not willing to allow a party who raises no objection early in the proceedings to take advantage of deficiencies at the later stages. If the opponent chooses not to amend its opposition, then the applicant can clearly raise these issues at a later date.

c) Cases on Sufficiency of Pleadings The opponent must plead each ground of opposition both specifically and in sufficient detail. In Hystar Aerospace Development Corp. v. Hi-Star Marine Co. (1991), 36 C.P.R. (3d) 570 (T.M.O.B., per Martin) [Hystar], the Hearing Officer noted that the statement of opposition referred to “non-compliance with Section 30”, with no specific details. At the argument stage, the opponent argued that the statement of intended use in the application was erroneous. In assessing this argument, the Hearing Officer indicated his confusion about the nature of the argument. While section 30 was referred to, nothing specific was said about which subsection was relevant. The Hearing Officer therefore found that he was precluded from considering such grounds, but stated at p. 573: “I would note in passing, however, that if such a ground had been raised, it might well have been successful”. Such statements are embarrassing, to say the least!

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In Continental Bazar v. Festival International de Jazz de Montreal (2006), C.O.M.C. No. 163 (T.M.O.B., per Tremblay), one of the grounds of opposition was as follows:

The trade-mark “FESTIVAL INTERNATIONAL DE JAZZ DE MONTREAL” is not registrable, having regard to the provisions of Section 12(1)(b), in that such trade-mark is clearly descriptive of the character or quality of the wares and services in association with which it has allegedly been used and/or of their place of origin.

The wording merely repeats the language of section 12(1)(b) and did not refer to any facts. The Board held that the opposition was not validly pleaded since it did not disclose any fact in support of the opponent’s allegations. This seems unduly restrictive. While, for example, a confusion argument would need further details of the opponent's confusing use, descriptiveness only reflects the applicant's mark, and not its wares or services. In Novopharm Ltd. v. Astra Aktiebolag (1999), 1 C.P.R. (4th) 403 (T.M.O.B., per Herzig), the application for PINK TABLET Design was opposed, inter alia, on the grounds that: section 30 was not complied with, since the mark is not a trade-mark; the applicant is not the person entitled to registration pursuant to section 16(1) because confusingly similar tablets had been used by the opponent; and the trade-mark is not distinctive, in that the tablets are common to the trade and had been used by others (the opponent listed 26 companies that it alleged used confusingly similar tablets). The Board found that each ground failed on the basis that the grounds were not set out in sufficient detail to enable the applicant to reply. Specifically, the opponent failed to provide facts explaining why the applied-for trade-mark is not a trade-mark, or to indicate exactly which of its products (i.e. pink tablets) it was relying upon in its 16(1) ground; and, with respect to the 26 companies, the specific products relied on, the ingredients therein, the shape thereof, or any information indicating where, when and how these products were used. The Board explained at p. 408 that, in its view, “the applicant should not be faced with the burden of investigating what products are sold by the opponent, and by third parties, in an attempt to discover which pink tablets the opponent may possibly be referring to.” (Also see Novopharm Ltd v. Astra Aktiebolag (1999), 1 C.P.R. (4th) 397 (T.M.O.B., per Herzig)). The Novopharm pink tablet decision, above, was appealed to the Federal Court (and dismissed), and then to the Federal Court of Appeal (Novopharm (2002), supra). Novopharm’s affiant had sworn that pink tablets were on the market in 1992 and provided excerpts of the Compendium of Pharmaceutical Specialties (CPS), which included pictures and indicated the colour and shape, name and manufacturer of tablets. Astra’s affiant had also admitted in cross-examination that he was aware of specific pink tablets in the marketplace. This information was not considered by the Registrar, who had reviewed the sufficiency of the pleadings only on the basis of how the pleadings were drafted, and not in

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conjunction with the evidence, including cross-examination. The Court of Appeal held at p. 293 that, once evidence is filed, “regard must be had to the evidence, as well as the Statement of Opposition, to see if the applicant has been provided with sufficient detail to make an adequate reply.” The additional evidence, in conjunction with the statement of opposition, was considered sufficient and the appeal was allowed. A review of other cases suggests that the Opposition Board is not entirely consistent in its approach on this issue. Where there may be some imperfections in the statement of opposition, the Board normally will assess whether the applicant could still understand the nature of the case it has to meet. For example, in Hystar, supra, it is understandable that the Hearing Officer found that it is not sufficient to plead “non-compliance with Section 30” as a ground of opposition, since section 30 has nine subsections, so the specific one relied upon must be set out. On the other hand, a specific reference to section numbers may not be necessary in certain cases. For example, in Sun Squeeze Juices Inc. v. Shenkman (1990), 34 C.P.R. (3d) 467 (T.M.O.B., per Savard) [Sun Squeeze], the opponent referred in its statement of opposition to confusion with its registered trade-mark. No specific reference was made to section 12(1)(d) (non-registrability due to confusion with a registered trade-mark). In noting that the omission was somewhat technical, and that there was no prejudice to the applicant, this deficiency was not found to be serious. Similarly, in Salomon S.A. v. Powder Blades Pty Ltd. (2000), 6 C.P.R. (4th) 275 at 279 (T.M.O.B., per Herzig), the Board accepted, “in the absence of any submissions from the applicant”, a section 12(1)(d) opposition pleading that did not specifically refer to the section number, noting that the allegations were nonetheless sufficient to support this ground of opposition. Moreover, in Albert Fisher Canada Limited v. Farmers’ Rice Cooperative (unreported) [2000] T.M.O.B. No. 59 (April 6, 2000) (T.M.O.B., per Bradbury), the opponent incorrectly referred to entitlement rather than registrability in its section 12(1)(d) pleading and failed to allege that its mark was previously used in its section 16(1)(a) opposition. Both errors were treated as mere technical deficiencies, with the Board noting, with respect to the latter deficiency, that the applicant raised no objections to the pleading and apparently understood the opponent to be claiming prior use. However, the Board did not take the same practical approach in Unisys v. Leitch Technology Corp. (unreported) [2000] T.M.O.B. No. 10 (January 31, 2000) (T.M.O.B., per Partington), where the opponent alleged, inter alia, that the applicant was not the person entitled to registration, as the applicant’s mark was, at the time of filing, confusing with the opponent’s registered mark. As confusion between an applicant’s mark and a registered mark is a ground of opposition under 12(1)(d), but not a basis for challenging entitlement to registration under 16(3), the Board did not consider confusion under 12(1)(d) because of the mispleading. The opponent’s entitlement (16(3)(a)) ground failed as it was

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unable to establish prior use of the mark, and so the issue of confusion was not considered. The Board noted that, had the opponent properly pleaded the 12(1)(d) ground of opposition or established use, the results of the opposition may well have been different. Similarly, in Desjardins Sécurité Financière v. The Tokyo Marine and Fire Insurance Co. (unreported) [2005] T.M.O.B. No. 182 (October 11, 2005) (T.M.O.B., per Tremblay), an opponent’s failure to rely on ss. 12(1)(d) and 38(2)(b) when it probably meant to (and obviously should have) was fatal to that ground of opposition because the opponent had pleaded specific sections in support of other grounds of opposition. This case was distinguishable from Sun Squeeze, supra, where the opponent had failed to plead any specific sections of the Act. The applicant in Sun Squeeze, supra also raised other objections to the statement of opposition in its counter statement, and also in written argument and at the oral hearing. No steps were taken by the opponent to rectify these complaints. The Hearing Officer noted that, where an opponent makes no effort to amend the statement of opposition to clarify its grounds, the Registrar ought to be reluctant to draw inferences when the facts are not clear. Similarly, in MKS Informatique Inc. v. MKS Inc. (unreported) [2002] T.M.O.B. No. 78 (May 23, 2002) (T.M.O.B., per Herzig), the Board stated “where the Opponent has notice of the applicant’s objections to pleadings, and the opponent does not act to correct serious deficiencies in its pleadings, the deficiencies will not subsequently be treated as inconsequential technical errors”.

5) Amending the Statement of Opposition

a) Adding a New Ground of Opposition With Leave of the Registrar As noted above, new facts may come to the attention of an opponent after the original statement of opposition is drafted that raise new grounds of opposition. In some cases, it may appear either that the wrong company was named as an opponent, or that an additional company should also be named. The applicant’s evidence may suggest a new ground not originally pleaded. The Regulations under the Act state that no amendment may be made to a statement of opposition without leave of the Registrar, and upon such terms as he deems appropriate (Rule 40). The current (and former) practice notice on oppositions suggests that amendments are to be permitted when “it is in the interests of justice to do so having regard to all the surrounding circumstances including a) the stage the opposition proceeding has reached; b) why the amendment was not made… earlier; c) the importance of the amendment…; and d) the prejudice which will be suffered by the other party”. In practice, the Opposition Board, in considering a request for an amendment to the statement of

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opposition, will ask the applicant for its comments, and will then, in the vast majority of cases, approve the amendment. If the Registrar invites the opponent to amend its statement of opposition in response to an amendment made to the application, the opponent should seriously consider doing so. In LendingTree, LLC v. Lending Tree Corp. (2006), 48 C.P.R. (4th) 355 (F.C.T.D., per Dawson J.), aff'd (2007), 55 C.P.R. (4th) 385 (F.C.A., per Sexton J.A.), the opponent applied for judicial review in order to quash the Opposition Board's decision to accept an amendment to the applicant's name in the trade-mark application. An affidavit had been filed in support of a request to amend the applicant’s name from Lending Tree Corp. to “Alex Haditaghi, trading as Lending Tree Corp.” on the basis that there was no legal entity known as Lending Tree Corp. and that Mr. Haditaghi had made an error in ignorance. The Federal Court held that judicial review was not appropriate because the opponent had the adequate alternative remedy of making argument before the Board as to the propriety of the amendment. In coming to this conclusion, Justice Dawson stated at p. 360:

My conclusion that the Board may consider the propriety of amendments made to the name of an applicant, and whether such an amendment changed the identity of the applicant, is consistent with the fact that, after the amendment was allowed, [the opponent] was invited to seek leave to amend its statement of opposition. This would appear to contemplate that [the opponent] would have an opportunity at the hearing of the opposition to argue that the decision to allow the amendment should not have been made and should not be permitted.

Refusal by the Registrar to amend a statement of opposition to add a new ground of opposition is an interlocutory decision that should not be reviewed on appeal or in judicial review proceedings, unless there are special circumstances (see Sysco, supra, and Simpson Strong-Tie Company, Inc. v. Peak Innovations Inc. 2008 FCA 236 (per Noël J.A.)). In Sysco, supra, Justice Lemieux concluded that there were special circumstances that justified immediate judicial review of the Registrar's decision not to grant the opponent's application for leave to amend its statement of opposition to add a new ground. In particular, Justice Lemieux found that an appeal to the Federal Court pursuant to s. 56 of the Act would not be an adequate remedy, since "[t]he jurisprudence of this Court in matters of trade-mark oppositions under the Act is to the effect the Federal Court does not have jurisdiction to deal with an issue not found in the statement of opposition" (p. 359), and thus the new issue could not be raised on appeal.

b) Adding a New Ground of Opposition on Appeal In the past, the Federal Court has held that, although parties may introduce new evidence on appeal (pursuant to s. 56(5) of the Act), it is not open to them to introduce new issues (see, for example, Corporation d'Aliments Buffet Ltee v.

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Col. Sanders Kentucky Fried Chicken Ltd. and Registrar of Trade Marks (1976), 31 C.P.R. (2d) 44 at 53 (F.C.T.D., per Walsh J.), and S.C. Johnson & Son, Inc. v. Esprit De Corp (1986), 13 C.P.R. (3d) 235 at 242-43 (F.C.T.D., per Cullen J.)). More recent case law has softened this position a fraction, suggesting that it is "only in the rarest of circumstances necessary to render justice" that the Federal Court will, on appeal pursuant to s. 56 of the Act, permit an amendment to a statement of opposition to add a new ground of opposition not asserted before the Registrar (Simpson Strong-Tie Co., Inc. v. Peak Innovations Inc. (2008), 66 C.P.R. (4th) 255 at 258 (F.C.T.D., per Lemieux J.), aff'd 2008 FCA 236 (per Noël J.A.) [Simpson] and Sun World International, Inc. v. Parmalat Dairy & Bakery Inc. (2007), 60 C.P.R. (4th) 300 (F.C.T.D., per Harrington J.) [Sun World]). However, in both of these cases, the Court held that "[t]here is an inherent unfairness to allow a litigant to 'save up' new grounds on appeal" (see Simpson, supra at 258 and Sun World, supra at p. 311). In Sun World International, Inc. v. Parmalat Dairy & Bakery Inc. (2007), 60 C.P.R. (4th) 291 (F.C.T.D., per Aronovitch, P.), Parmalat, which sells cheese in association with the mark BLACK DIAMOND, successfully opposed Sun World International's application for the same mark in association with plums. Sun World appealed the decision to the Federal Court. Appearing first before the Prothonotary, Parmalat moved to amend its statement of opposition in order to add depreciation of goodwill (section 22 of the Act) as a ground of opposition. The Prothonotary refused leave, finding that there is no authority for the notion that the Court can substitute its discretion for that of the Registrar with regard to amending the statement of opposition and thus it had no jurisdiction for the amendment. Further appeal to the Federal Court (Sun World, supra), indicates that there may be circumstances under which the Court will grant leave to amend a statement of opposition on appeal. Harrington J. held that the Registrar was unable to allow an amendment to the statement of opposition after a ruling, as the Registrar was then functus. The Federal Court is therefore unable to substitute its discretion in place of the Registrar pursuant to s. 56 of the Act. Federal Courts Rules, Rule 75 also precluded granting leave to amend the statement of opposition, as doing so would reopen the hearing. The only permissive authority the Court cited was Federal Courts Rules, Rule 399(2), which allows the Court to set aside or vary an order by reason of a matter that arose or was discovered subsequent to the making of the order. The Court declined to describe the s. 22 ground of opposition as a matter “discovered” after the Registrar’s initial order.