New evidence before Federal Court saves TECHNOCORP mark

In Sukdeo v Gestion Technocap Inc, the Federal Court has reversed a decision of the Trademarks Opposition Board (TOB) on the basis of new evidence filed before it. The court found that the evidence would have materially affected the registrar's findings of fact on some of the factors considered.

Anthony R Sukdeo, trading as Technosoft Business Systems, applied to register TECHNOCORP as a trademark for computer-related goods and services. Gestion Technocap Inc, a venture capital company that invests in privately-owned technology companies, opposed the application on the basis of its mark TECHNOCAP used in relation to, among other things, internet services. The TOB refused to admit Sukdeo's evidence on the gorunds that it was out of time and proceeded to refuse the application, finding that Sukdeo had failed to demonstrate that TECHNOCORP was capable of distinguishing his goods and services from those associated with TECHNOCAP. However, the TOB found that other grounds of opposition pleaded by Gestion Technocap were less likely to succeed.

The Canadian Trademarks Act provides a right of appeal to the Federal Court from any decision of the TOB. Rather unusually, however, litigants are permitted to file new evidence on appeal in the Federal Court even though it does not conduct a hearing de novo.

Sukdeo appealed and submitted to the Federal Court the evidence that the TOB had rejected. The evidence provided a full description of his business, including the nature of trade, goods and use of the TECHNOCORP mark since May 1996. Gestion Technocap's new evidence clarified its relationship with its affiliates that made some use of its mark. The Federal Court followed the leading case of Molson Breweries v John Labatt Ltd:

"In the absence of additional evidence adduced in the Trial Division, the registrar's decisions, whether of fact, law or discretion, within his area of expertise, are to be reviewed on a standard of reasonableness simpliciter. However, where additional evidence is adduced in the Trial Division that would have materially affected the registrar's findings of fact or the exercise of his discretion, the Trial Division judge must come to his or her own conclusion as to the correctness of the registrar's decision."

The court found that Sukdeo's new evidence would have materially affected the registrar's findings of fact on three of the six factors that the TOB considered, namely:

• the length of time the marks had been in use;
  
  
• the extent to which the marks had become known; and
  
  
• the nature of Sukdeo's goods, services, business and trade.

Thus, the court determined to come to its own conclusion about the correctness of the registrar's decision.

The court then reconsidered the TOB's findings in light of the new evidence. It concluded that the goods, services, business and trade of the two parties were completely different, and therefore Sukdeo had met the burden of showing that his mark was distinctive. The court found that (i) the TOB was correct in effectively dismissing the other grounds of opposition, and (ii) the new evidence did not impact these findings.

This case shows that new but merely confirmatory evidence, as filed by Gestion Technocap, will generally not lead the court to reconsider a decision of the TOB on the merits. Material evidence that was not submitted before the TOB, however, will oblige the court to reach its own conclusion on the merits.

Gordon J Zimmerman and Jason J Hannibal, Borden Ladner Gervais LLP, Toronto