No New Grounds of Opposition Allowed on Trade-Marks Appeal

In Canada, decisions of the Registrar of Trade-marks in opposition proceedings can be appealed to the Federal Court of Canada. The appeal is sometimes referred to as a de novo hearing, as the parties may adduce new evidence not before the Registrar. However, it was not clear whether the opponent may introduce new grounds of opposition on the appeal. In Sun World International Inc. v Parmalat Dairy & Bakery Inc (2007) FC 641, Parmalat had successfully opposed Sun World's application for BLACK DIAMOND for use in association with plums, based on its existing registration for BLACK DIAMOND for cheese. The Registrar denied Sun World's application because it had failed to show that there would be no reasonable likelihood of confusion. Sun World appealed the Registrar's decision to the Federal Court. On appeal, Sun World filed new evidence relating to the issue of confusion. Parmalat brought a motion to amend its Statement of Opposition to add a new ground, claiming that use of the mark BLACK DIAMOND by Sun World would depreciate the goodwill of Parmalat's registered trade-marks. The Federal Court ruled that although new evidence may be introduced on appeal, new issues may not. The Court has no jurisdiction to amend the Statement of Opposition on appeal. As the Court put it, "the addition of new evidence and the de novo nature of the ensuing hearing, does not mean…that the appeal is a whole new ballgame. It remains an appeal." This decision is an important reminder to potential Opponents to always be as complete and thorough as they can when drafting Statements of Opposition. While it may not always be possible to adduce evidence on every ground during the opposition, the fact that the ground was raised in the original Statement of Opposition leaves the possibility for the introduction of new evidence on that issue on appeal. On a final note, because the Court held that it had no jurisdiction to amend the Statement of Opposition, there was no basis on which it could consider whether depreciation of goodwill (or dilution) is a proper ground of opposition. This question will have to wait for another day. For the full text of the decision, visit: http://decisions.fct-cf.gc.ca/en/2007/2007fc641/2007fc641.html Summary by: Hung Nguyen