In 911979 Alberta Ltd v Hero Nutritionals, Inc, 2014 TMOB 72, a recent decision of the Trade-marks Opposition Board, the Opponent in the opposition succeeded, even though the Opponent itself had filed no relevant evidence. The Opponent relied solely on the evidence of the Applicant and the Application was denied by the Opposition Board. The decision centered on the claimed date of first use for the trade-mark in the Application.
The Applicant’s evidence in this case supported a date of first use of June 2008, while its Application claimed that the Applicant had been using the trade-mark in the Application since January 8, 2008. The Applicant did not expressly say in its evidence that it used (or did not use) the trade-mark between January and June, but its evidence did not support any use prior to June 2008 (i.e. there was a discrepancy or at least an ambiguity). Moreover, the use that was shown was by a different (albeit likely related) entity and there was no evidence to establish the Applicant itself had any “direct or indirect control of the character or quality of the wares or services” with which the trade-mark had been used. Consequently, the Applicant could not even claim the benefit of this ‘late’ use by a related party.
Based upon the available evidence, the Opposition Board found that the Opponent met its initial burden under the relevant ground of opposition, but that the Applicant had not met its burden that it complied with the relevant requirements of the Trade-marks Act, R.S.C., 1985, c. T-13, namely, it could not support the date of first use claimed. As a result, the Application was refused.
This decision provides some important reminders to Canadian trade-mark owners:
- It should remind parties in a trade-mark opposition to always file their best (and most complete) evidence as deficiencies or discrepancies in the evidence could be used against them.
- It should remind trade-mark applicants that if use of the trade-mark covered by an application is made by another party (even if a related party, such as a subsidiary), to ensure this use is licensed, that they exercise control over this use and to document this, so that this can be shown in an opposition or other proceeding. It is good practice to have a formal (written) license agreement that provides the requisite level of control over use of the trade-mark.
- Lastly, it should also remind applicants to be careful when claiming a date of first use in an application, as if they are unable to substantiate that date in an opposition, it could prove fatal to their application. Note that recent changes to Canadian trade-mark law will eliminate the requirement to specify a use basis or date of first use in applications; however, as trade-mark use is still relevant for determining trade-mark entitlement and rights, trade-mark owners should still take care to properly document dates of first use and to maintain evidence of continued use.
For questions on trade-mark application or licensing requirements, trade-mark oppositions or other aspects of Canadian intellectual property law, please contact any of the authors or another member of Cox & Palmer’s Intellectual Property & Technology team.
Please visit the following link for a PDF version of the article: Read the full decision: 911979 Alberta Ltd v Hero Nutritionals, Inc, 2014 TMOB 72 (CanLII)
Canadian trade-mark applications and oppositions: Put your best foot forward, exercise control and be careful with claimed use dates