Court upholds board's finding that respondent used trademark before filing date
The Federal Court of Canada has noted that tribunals and boards often need to make decisions based on imperfect evidence when the evidence of a party opposing a trademark registration isn’t plentiful.
In 101217990 Saskatchewan Ltd. (District Brewing Company) v. Lost Craft Inc., 2022 FC 1254, District Brewing Company – a brewery in Regina, SK – brought an application to register the trademark “Find Your Craft” in association with its beer on Sept. 8, 2016.
Lost Craft Inc. – a brewery in Toronto – filed an opposition under s. 16(3)(a) of the federal Trademarks Act. Lost Craft alleged that it used the trademark “Find Your Craft” before Sept. 8, 2016, and that District Brewing’s proposed trademark was confusing with a trademark that Lost Craft previously used “in association with beer.”
In 2021, the Trademarks Opposition Board allowed Lost Craft’s opposition and dismissed District Brewing’s application for registration. The board made the following findings:
- Lost Craft used the “Find Your Craft” trademark in association with “brewery services” before the application’s filing date by featuring it on its delivery van starting on Aug. 10, 2016
- Lost Craft’s evidence and submissions referred to both “beer” and “brewery services” though its notice of opposition mentioned only “beer”
- District Brewing understood the case that it had to meet
- The parties’ marks led to a reasonable likelihood of confusion since they were identical and District Brewing’s beer and Lost Craft’s brewery services clearly overlapped.
District Brewing argued that the board exceeded its jurisdiction by considering Lost Craft’s use of the trademark in association with brewery services when its notice of opposition referred only to beer.
The court disagreed. The board’s consideration of Lost Craft’s use of the trademark in association with brewery services did not amount to a new ground of opposition that Lost Craft failed to plead, the court said.
Saskatchewan brewery knew of Ontario brewery’s use of trademark
The issue of whether the board erroneously found that District Brewing knew the case that it had to meet was a question of mixed fact and law. The court decided that it could not intervene with the board’s finding since it lacked palpable and overriding errors. Based on District Brewing’s written submissions, the brewery knew that Lost Craft was relying on the use of its trademark in association with brewery services.
District Brewing also contended that the board erroneously found that Lost Craft used the trademark “Find Your Craft” in association with brewery services before the application’s filing date.
Regarding this issue, Lost Craft offered additional evidence through its principal’s affidavit, on which he was cross-examined. He said that the company used the van featuring the trademark to deliver products and to provide services to customers. However, he could not name any large events or festivals from Aug. 10 to Sept. 8, 2016, during which the company used the delivery van.
Lost Craft’s new evidence did not materially affect the board’s factual findings, the court said. Thus, the principal’s inability to name an event or festival occurring during that period was immaterial.
The court held that the board made no palpable and overriding errors in connection with the issue of the use of the mark before the filing date. The board was entitled to find, based on the evidence, that Lost Craft affixed its trademark to the van on Aug. 10, 2016, and that it used the vehicle for its intended purposes between Aug. 10 and Sept. 8, 2016, the court concluded.