Federal Court Of Canada Sets Aside Decision Of The Trademarks Opposition Board Refusing Leave To File An Amended Statement Of Opposition

On June 7, 2022, the Federal Court of Canada (the Court) released its decision in Anheuser Busch, LLC v H.O.W. Medical Solutions Ltd., 2022 FC 842, in which it set aside the decision of the Trademarks Opposition Board (the Board) refusing the request by Anheuser-Busch, LLC (Anheuser-Busch) to amend its statement of opposition.  The Court determined that there were palpable and determinative errors in the Board’s decision to refuse Anheuser-Busch’s request.

H.O.W. Medical Solutions Ltd. (H.O.W. Medical) applied to register the trademark HELPING PEOPLE FEEL BETTER ONE BUD AT A TIME (the Mark) in association with various cannabis products.  Anheuser-Busch opposed the application on the basis that it was confusing with its 80 registered trademarks.

Anheuser-Busch subsequently sought leave to file an amended statement of opposition to include reference to its marks that registered after the date of the statement of opposition for cannabis products and services (the Budweiser Cannabis Marks).

The Board considered the relevant factors and concluded that H.O.W. Medical would suffer greater prejudice if the request was granted than Anheuser-Busch would suffer if the request was refused.  Thus, the Board refused to grant Anheuser-Busch leave to amend. Anheuser-Busch appealed.  H.O.W. Medical did not take a position in the appeal.

On appeal, the Court noted that the central issue was whether the Board’s conclusion that it was not in the interests of justice to permit Anheuser-Busch to amend the statement of opposition was a palpable and determinative error.  The Court held that the Board erred in failing to consider the importance of the Budweiser Cannabis Marks, especially since none of the 80 registered trademarks in the statement of opposition included goods or services related to cannabis.  Also, the Court determined that this error was compounded by the Board’s failure to address the prejudice Anheuser-Busch would suffer if its request was refused, which resulted in “a one-sided assessment of the prejudice alleged by the parties, a factor fundamental to the question of whether the amendments are in the interests of justice.” 

The Court concluded that the Board’s refusal was not reflective of the evidence before it and was not explained with intelligible reasons.  The Court set aside the refusal, and returned Anheuser-Busch’s request to the Board for a second and independent assessment.

Summary By: Michelle Noonan