2011 TMOB 100 (June 25, 2011)
The Trademarks Opposition Board refused an application to register the trademark THYMES & Design on grounds including confusion with a previously registered trademark. The Board discussed the admissibility and use of a lawyer's affidavit in a trademark opposition proceeding, and confirmed that such an affidavit is admissible if it does not include opinion evidence about a contentious issue. The Board also confirmed that an application filed based on registration and use in the country of origin requires an applicant to have used the trademark in the jurisdiction of the country of origin as of the Canadian filing date.
The applicant filed a trademark application based both on proposed use and registration and use in the United States. During the opposition proceeding, the applicant filed an affidavit of a lawyer employed by the applicant's agent law firm. The Trademarks Opposition Board accepted the affidavit because the affidavit did not include opinion evidence about a contentious issue. Also, the Board refused to allow the application to proceed based on registration and use in the United States because the applicant could not establish use of the trademark in the United States before the Canadian filing date. With respect to the remaining proposed use claim, the Board found the trademark confusing with one of the opponent's registered trademarks and therefore refused the application based on confusion, non-entitlement and lack of distinctiveness.
Facts. On March 30, 2005, the applicant, The Thymes, Limited, filed trademark Application No. 1,252,795 for registration of the trademark THYMES & Design in association with various wares, including soap, shampoo and conditioner. The application was based both on proposed use, and on registration and use in the United States. The applicant's United States registrations included dates of first use in July 2005, several months after the Canadian filing date.
The opponent, Reitmans (Canada) Limited, opposed the application on grounds including confusion with a number of previously applied-for and registered trademarks, including THYME MATERNITY (Registration No. 611,775) registered for use in association with a number of goods, including clothing, footwear and skincare products, non-entitlement of the applicant to registration of the trademark, and lack of distinctiveness. The opponent also opposed the mark on the basis that the application does not conform to the requirements of section 30(d) of the Trademarks Act ("Act") because the applicant did not register and use the mark in the United States at the alleged dates of registration or use.
The applicant relied on an affidavit sworn by a lawyer employed by the applicant's agent law firm. The affidavit included printouts from the applicant's website, particulars of eight United States trademark registrations owned by the applicant, particulars of a pending U.S. application and U.S. registration owned by the opponent, particulars of third party Canadian registrations containing the word THYME, and a definition of the word THYME taken from a Dictionary.
Analysis. Initially, the opponent challenged the admissibility of the applicant's lawyer's affidavit. The Board considered Cross Canada Auto Body Supply (Windsor) Limited v. Hyundai Auto Canada, 2005 FC 1254, where the Federal Court rejected affidavit evidence by employees of the solicitors for one of the parties.
The Board concluded that the lawyer's affidavit did not include opinion evidence about a contentious issue. On that basis, the Board distinguished the lawyer's affidavit from the affidavit at issue in Cross Canada and admitted the affidavit into evidence.
Regarding the contents of the lawyer's affidavit, the Board decided that the particulars of the United States trademark registrations were reliable and thus admissible as a hearsay exception. However, the Board considered the contents of the printouts inadmissible hearsay, and accepted the website printouts only as evidence that the websites existed when the affidavit was made.
With respect to the section 30(d) ground of opposition, the opponent pointed to the applicant's evidence consisting of the applicant's U.S. registrations, which listed dates of first use in July 2005. The opponent argued that these dates contradicted the applicant's claim to use of the mark in the U.S. as of the applicant's filing date (March 2005). The Board agreed and the onus was placed on the applicant to show use of its mark in the U.S. as of the Canadian filing date. The applicant argued that there was no requirement in the Act that there must be use of the trademark in the U.S. at the date of filing when a section 16(2) claim is made, but rather section 16(2) requires only that the "applicant requests registration of the trademark in respect of the wares in association with which it will be registered and used."
The Board rejected the applicant's argument and concluded that in order for the applicant to base its Canadian application on its United States application, the applicant was required to have used its trademark in the United States before filing its Canadian application.
Given that the Board was unwilling to admit the website printouts for the truth of their contents, the applicant was unable to prove use of its trademark in the United States before its Canadian filing date, and therefore the opponent successfully defeated the basis of registration and use in the U.S.
The Board allowed the application to proceed based on proposed use. However, the Board considered the trademark confusing with the opponent's THYME MATERNITY registered trademark and rejected the application on the ground of confusion. The Board applied similar reasoning to reject the application on the ground that the applicant was not the person entitled to registration and on the ground that the trademark was not distinctive.
This Trademarks Opposition Board decision is important as it emphasizes a cautious approach to having agents or employees of agents file affidavit evidence, particularly where the evidence includes opinions about contentious issues. The decision is also a reminder of the hearsay restrictions that the Board may apply.
Further, this decision confirms that an application for registration of a trademark based on registration and use in a country of origin as of the Canadian filing date is not valid unless the trademark was used in the country of origin before the application is filed in Canada. In addition, use statements made in country of origin applications can be relied upon by an opposing party if the statements are inconsistent with a claim in the Canadian application.
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