Trademarks Opposition Board of Canada Considers Estoppel by Convention in Confusion Analysis

On July 15, 2021, in Symantec and Veritas Technologies v Det Norske Veritas, 2021 TMOB 143, the Trademarks Opposition Board (TMOB) of Canada rejected an opposition to the trademark application for DET NORSKE VERITAS for software based on confusion with the opponent’s VERITAS trademark for software. 

Of particular interest is that the TMOB considered evidence of the Applicant’s apparent breach of its undertaking to the Opponents’ predecessor in title to amend its application.  The Opponents argued that this breach was a relevant surrounding circumstance and that as a result, even if the trademarks were not held to be confusing, the Applicant should be prevented from registering its trademark in breach of its prior agreement.  The Opponents argued that, having agreed to amend its application in a certain way, the Applicant was “estopped by convention” from arguing that its trademark was not confusing.  “Estoppel by convention” operates where parties have agreed that certain facts are deemed to be true to form the basis of an agreement. In this case, the Opponents’ argument was essentially that the Applicant agreed to amend its application in a certain way in order to avoid confusion with the Opponents’ trademarks and thus were estopped from arguing that the unamended application was not confusing.

The Opponents further claimed that the agreement was determinative of the issue of confusion as it represented an implicit admission by the Applicant that its trademark would likely lead to confusion in the marketplace, unless the Applicant amended its application and limited its use.  The Opponent also argued that it would be unfair and unjust to allow the Applicant to act as if it had never signed the agreement.

The TMOB held that, the breach of the undertaking did not rise to the level of an estoppel and ultimately, it was not a relevant surrounding circumstance.  The TMOB noted that “a very high bar must be met for estoppel to be permitted in an opposition context”, and that, in order for estoppel to be created, there must be a common assumption shared by both parties.

The TMOB concluded that, based on the evidence available, it was not convinced that the common assumption relied upon by the parties was a “serious risk of confusion”.  In concluding that the agreement did not meet the bar for estoppel, the TMOB noted that the preamble was brief and did not provide any detailed statements of intent; there was no evidence regarding the parties’ negotiations; the parties had alternate views of the terms; and the agreement was governed by Norwegian law.  The TMOB refused to draw any negative inferences from the agreement against the Applicant, and held that it was not a relevant surrounding circumstance favouring the Opponents.

The decision, while somewhat rare in that it considers estoppel issues, is consistent with the practice of the TMOB to severely limit its consideration of factors other than those specifically enumerated in the Trademarks Act.  This decision also suggests that, in the event agreements with respect to Canadian trademark applications are not honoured, one must look to a Court and not to the Opposition Board for relief.  Moreover, since the recent ruling of the Supreme Court of Canada in Vavilov (as previously reported by the E-TIPS® Newsletter here), pursuant to which Canadian courts are required to give greater deference to decisions of administrative tribunals such as the TMOB, in cases where a party is alleged to have breached its agreement in respect of a pending Canadian trademark application or opposition, it may be advisable to seek relief from a Canadian court before the Registrar of Trademarks or TMOB issues a decision.

Summary By: Gary Daniel and Michelle Noonan