In context of opposition, Registrar has jurisdiction to issue a "split" decision for accepted goods and/or services under subsection 38(8)
Les Marques Metro / Metro Brands S.E.N.C. v. 1161396 Ontario Inc., 2017 FC 806
This was an appeal pursuant to section 56 of the Trademarks Act from the Opposition Board's decision allowing the registration of the Respondent's IRRESISTIBLES mark for the following goods: "candy and snacks, namely candy bars, chocolate bars, all sugar confectionary, peanut brittle, caramel bars, cookies & biscuits, all gummi confectionary, chocolate confectionary, chocolate mints, assorted chocolate boxes, and marshmallow derivative candy".
In the underlying decision, the Hearing Officer was not satisfied that the Applicant had met its initial evidential onus to show that Respondent's Mark was not used in association with "cookies and biscuits" at the claimed date of first use. The Hearing Officer dismissed the subsection 30(b) ground of opposition and rejected the opposition.
On appeal, the Applicant filed new evidence, while the Respondent did not tender any new evidence and declined to cross-examine the Applicant's affiants. While the newly filed evidence post-dated the material date at which evidence is to be considered for the purposes of subsection 30(b) (the filing date of the application), the Court found that the evidence was admissible, subject to relevance, exclusion rules, and the Court's discretion. The Court concluded that the new evidence would have materially affected the underlying decision and applied the standard of correctness to the Registrar's decision. The Court ultimately found that the Applicant's newly tendered evidence reasonably led to the conclusion that the Respondent had not used the Mark since at least as early as the claimed date of first use.
Finally, the Court also concluded that the Registrar has the jurisdiction to issue a "split" decision pursuant to subsection 38(8) of the Trademarks Act, despite the Respondent's arguments to the contrary. Therefore, the Court returned the trademark application to the Trademarks Office for further processing in respect of the accepted goods, but not the goods "cookies and biscuits" that were successfully opposed.
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