Amendment to opposition refused by Federal Court

In Sun World International Inc v Parmalat Dairy & Bakery Inc (2007 FC 641, June 20 2007), the Federal Court of Canada, in the context of an underlying appeal against a decision rendered by the registrar of trademarks to deny Sun World's BLACK DIAMOND trademark application, has refused that an amendment to Parmalat's statement of opposition be made in order to add a new ground of opposition.

As a result of the Supreme Court of Canada's decision in Veuve Cliquot Ponsardin v Boutiques Cliquot Ltée, Parmalat made an application trying to introduce a new ground of opposition against the registration of Sun World's application, further to the Supreme Court's clarification of the law with respect to the depreciation of goodwill attached to a trademark.

In making its decision, the Federal Court reviewed the nature of an appeal, which allows new evidence to be filed and for the Federal Court to substitute its discretion for that of the registrar of trademarks. To that effect, the court mentioned that although new evidence may be adduced, said evidence can refer only to issues that were initially raised before the registrar.

In this particular case, Parmalat submitted as its first argument that its application was simply a motion to amend a 'document' pursuant to Rule 75 of the Federal Court Rules, which provides that the court may, at any time, allow a party to amend a 'document'. It argued that since the statement of opposition is a 'document' that forms part of the file, it may be amended as provided by Rule 75. However, the court rejected this argument.

Parmalat also suggested that since Sun World's appeal is based on new evidence filed by Sun World, it should therefore be considered as an appeal de novo which authorizes the Federal Court to exercise the discretion vested in the registrar to amend the statement of opposition. This argument was also set aside by the court since the de novo exercise of discretion emanating from Section 56(5) of the Trademarks Act is not available for all purposes, and could not be used in relation to the case at hand.

In light of the above, the court therefore concluded that there was no basis to find that it had the authority to substitute its discretion for that of the registrar to allow the amendment. The matter should have been presented to the registrar in the original opposition prior to the appeal.

Catherine Daigle, Leger Robic Richard LLP, Montreal