No new issues on appeal of Opposition Board decision, says court

In Simpson Strong-Tie Company Inc v Peak Innovations Inc (2009 FC 1200, November 23 2009), the Federal Court has upheld a decision of the Trademarks Opposition Board in which the latter had dismissed an opposition against the registration of two marks consisting of the colour green for deck fasteners.

Peak Innovations Inc applied for the registration of two trademarks consisting of the colours green and greyish-green for "fastener brackets for attaching deck boards". Simpson Strong-Tie Company Inc opposed the applications, but the Trademarks Opposition Board rejected the opposition.

On appeal, Strong-Tie argued six grounds of opposition. In relation to the first ground (distinctiveness), Strong-Tie brought forward evidence that:

  • third parties in the Canadian marketplace, including itself, had used the colour green for deck building products; and
  • these items could be confused with Peak's green fasteners.
The court found that different manufacturers used different colours for a variety of hardware products. However, on the evidence, Peak was the only party to pair the colour green with the deck fastener product, and this distinguished Peak’s product from those of others. 

Strong-Tie sought to strengthen its position by adding the new ground that the inherent nature of the marks was not distinctive. However, the court refused to decide on this issue, stating succinctly as follows: “The law is clear on issues that were not raised before the registrar or Opposition Board. While a party is open to raise new evidence on appeal, it cannot raise new issues.”

The court also rejected Strong-Tie's second and third arguments that the marks applied for were primarily functional or a distinguishing guise. With respect to functionality, the court found that it was the powder coating, as opposed to the colour, which provided functionality. Moreover, it found that the mark was not a distinguishing guise, notwithstanding evidence advanced by Strong-Tie that the green powder coating wrapped the fastener to protect it from the elements. It regarded the evidence - obtained by what it characterized as a “leading” question - as doing little to change its view of the mark.

In reference to the fourth ground of opposition (ie, that Peak had not used the marks since the date referred to in the applications), Peak supplied an invoice and an affidavit. This evidence satisfied Peak's burden under Section 30(b) of the Trademarks Act to show that the colour marks had been used in association with the goods at issue. Strong-Tie's argument that the relevant product was not found on Peak's website was rejected, as the absence of the product could not be found to be conclusive of non-use as of the date referred to in the application.

Strong-Tie's fifth ground was refined at the oral hearing before the Opposition Board to state that the marks were contrary to Section 30(h) of the act, which provides the drawing requirement for a design mark. However, the board had refused to hear this argument because it was not specifically pleaded in the statement of opposition. On appeal, the court found that Peak had sufficient notice of this issue from the oral hearing, but denied the argument on its merits. Strong-Tie's argument that the drawings did not feature a back-view of the fasteners was also refused, as it had not been raised in the statement of opposition or at the hearing.

The final unsuccessful argument by Strong-Tie, which related to the effect of a third-party licence, had not been before the Opposition Board. Accordingly, the court found that this issue could not be raised on appeal.

Chad Matheson, Cameron MacKendrick LLP, Toronto

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