Federal Court Clarifies Requirements in Trademark Opposition Related to Extended Trademark Registrations

On June 1, 2021, the Federal Court of Canada (the Court) in Schneider Electric Industries SAS v Spectrum Brands, Inc., 2021 FC 518, dismissed an appeal challenging the Registrar of Trademarks decision, 2019 TMOB 94, finding that an opponent in a trademark opposition proceeding is not required to amend its statement of opposition in order to rely on an amended trademark registration which extends the statement of goods or services.

This case involved Spectrum’s opposition to Schneider’s application to register the trademark WISER for use with a variety of goods and services related to electric apparatus. Spectrum’s statement of opposition cited its registration TMA129,747 for the trademark WEISER for a variety of lock and door hardware goods (the ‘747 Registration) and a pending application to extend the ’747 Registration to add a series of new goods. Prior to the opposition hearing, Spectrum’s application to extend the statement of goods matured to registration, thus amending the ’747 Registration. The Registrar considered the amended ‘747 Registration and refused, in part, Schneider’s application to register the trademark WISER.

On appeal, Schneider asserted that Spectrum cannot rely on the amended ‘747 Registration for the registrability ground of opposition, unless the statement of opposition is amended to refer to it, which Spectrum had failed to do. In dismissing Schneider’s appeal, the Court upheld the Registrar’s decision and concluded that the amended ’747 Registration did not give rise to a new ground of opposition. The Court distinguished the present case from one where an opponent must amend its statement of opposition to properly plead its trademark application that matures to registration, as this results in a new ground of opposition. Furthermore, the Court found that Schneider had fair and adequate notice of Spectrum’s registrability grounds that included arguments based on the ’747 Registration as amended. 

Summary By: Sharan Johal