Jurisdiction to allow application amendments during oppositions upheld


In Lending Tree LLC v Lending Tree Corp, the Canadian Federal Court of Appeal has upheld the Opposition Board's decision to allow Lending Tree Corp to amend its application to register the mark LENDING TREE during an opposition proceeding against that mark.

Lending Tree Corp, a Canadian company, filed a trademark application for LENDING TREE, claiming use of the mark in Canada since 2001. However, the company had not been incorporated at the application date. The application was opposed by Lending Tree LLC (a US corporation), which alleged, as one of the grounds of opposition, that the trademark had not been used by the applicant on the claimed date of first use since Lending Tree Corp did not exist on that date.

During the opposition, the Lending Tree Corp was permitted by the Opposition Board to amend its trademark application by changing the name of the applicant from the company to an individual named Alex Haditaghi. In permitting the amendment to the trademark application, the board informed the opponent, Lending Tree LLC, that if it considered that an amendment to its statement of opposition was required, it could request leave to do so. Lending Tree LLC objected to the amendment and filed an application for judicial review in the Federal Court.

The Federal Court rejected the judicial review application and decided that the board had jurisdiction to consider the issue of whether there had been a valid amendment in changing the name of the applicant for a trademark, and that the board was the appropriate body to consider that issue. Lending Tree LLC appealed that decision to the Federal Court of Appeal.

The Federal Court of Appeal dismissed the appeal. It stated that in considering the ground of opposition that the applicant for the trademark had not used the mark on the date alleged in the application, the Opposition Board must necessarily determine whether the application was validly amended. Accordingly, the board has jurisdiction in respect of such an amendment.

Agreeing with the reasoning of the Federal Court, the appellate court noted that Lending Tree LLC would have an opportunity at the Opposition Board hearing to argue that the decision to allow the amendment should not have been made and should not be permitted.

John Macera, Macera & Jarzyna - Moffat & Co, Ottawa

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