Michael Ford (post until Oct. 31/19)
Intellectual Property

Best to file evidence no matter how strong your case is

Parties in trademark disputes should always put their best foot forward and file evidence to support their position no matter how confident they are, Toronto intellectual property lawyer John Simpson tells AdvocateDaily.com.

That’s one of the lessons from a recent Federal Court decision involving a provincial tourism bureau that sought trademark protection for the name of an event it organized, says Simpson, principal of Shift Law, a boutique firm specializing in IP and new media law.

After the tourism bureau brought its application to register a trademark including the phrase 'Bon Appetit', a U.S. magazine publisher filed a statement of opposition, arguing that it had already registered several trademarks including 'Bon Appetit' and that granting the application “would likely be confusing for individuals in the marketplace,” the Federal Court wrote.

The Trademarks Opposition Board (TMOB), which deals with evidence in affidavit form, approved the bureau’s application, finding that the publisher had not filed adequate evidence. The ruling was then challenged before the Federal Court and the appeal was granted. The tourism bureau did not participate in the appeal process.

Simpson says he found it surprising that the bureau’s application was approved by the Trademarks Office — which led the publisher to oppose it before the TMOB — because of the obvious similarities between the bureau’s trademark and the publisher’s pre-existing trademarks. But he says the publisher should still have filed evidence of its extensive use of its trademarks to support its opposition rather than sitting back and expecting the TMOB to agree with it.

“Even when it seems like the Trademarks Office made a mistake, you still need to put your best foot forward in an opposition proceeding. The publisher didn’t file much evidence before the opposition board, and that’s clear in the reasons of the Federal Court,” Simpson says.

Unlike most appeals, new evidence can be filed in the Federal Court when appealing a decision of the TMOB which is “exactly what ended up determining the day here,” he adds.

The publisher “filed evidence of what’s called acquired distinctiveness and long-time usage of the term and on that basis, the court found that the application was confusing with the existing registrations,” Simpson says.

“The court didn’t have much trouble going through the factors of confusion and determining that there’s a good likelihood that these marks were going to be confusing. They’re identical marks, and they’re used for overlapping services and in the same channels of trade,” he says.

In accepting the publisher’s submissions on acquired distinctiveness, the court wrote, “In many cases the acquired distinctiveness of a trademark is demonstrated by the reach of its presence in the market through both storefront presence and advertising. Consumer awareness can be demonstrated through surveys, or simply inferred from widespread advertising and the number of stores displaying the banner.

"Here, [the publisher] sought to demonstrate its presence in the market through evidence of the sales of the magazine and the online presence through a website and social media vehicles. I find that the evidence of online and social media presence and activity is as useful and compelling as evidence of storefront presence and more traditional forms of advertising in print, radio or television.”

Simpson says while he agrees with the court’s decision on its merits, the order requiring the tourism bureau to pay the publisher’s costs “raises an eyebrow” because the bureau didn’t participate in the appeal. He says the court seems to be suggesting that rather than sit on the sidelines for the appeal, the bureau should have withdrawn its application.

The order is also surprising, he says, because if the publisher had simply filed sufficient evidence before the TMOB, there would have been no need for an appeal.

“They could have saved themselves time and money if they had just filed their evidence in the first round. It would have made things much easier,” Simpson says. “Perhaps they were a bit overconfident that the opposition board would get it right.”

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