Timely evidence could save mark holders from the opposition merry-go-round

In Minolta-QMS Inc v Cheng-Lang Tsai, the Federal Court has allowed Minolta-QMS Inc's appeal from a decision of the registrar of trademarks, which had held that the application for registration of the trademark MAGICOLOR, filed by Cheng-Lang Tsai, should be permitted. The case demonstrates that it is prudent for an opponent to file evidence when it has the opportunity to do so, otherwise it will need to ensure that its evidence is of such probative significance that the court will review the opposition decision under appeal on 'a correctness', as opposed to 'clearly wrong', standard.

In 2000 Tsai filed an application in Canada to register the trademark MAGICOLOR in association with "electrical wire and cable, namely shielded, unshielded and insulated electric wire, cable and cord". Minolta-QMS Inc (now Konica Minolta Printing Solutions USA Inc), a producer and retailer of printers sold under the MAGICOLOR trademark, opposed the registration. However, Minolta did not file any evidence-in-chief before the Trademark Opposition Board and only filed evidence in reply to Tsai's evidence.

The board found that Minolta's reply evidence was inadmissible given that it was not confined to matters raised in Tsai's evidence. As such, Minolta failed to meet the initial onus of establishing that its mark was known in Canada before the filing date of the application and the board rejected Minolta's opposition to the registration.

On appeal, Minolta filed additional evidence while Tsai chose to adduce no further evidence. The Federal Court found the additional evidence submitted by Minolta to be of such probative significance that it warranted a review of the board's decision on a standard of correctness rather than on the standard of whether the board was "clearly wrong".

The evidence submitted on appeal by Minolta established that the MAGICOLOR mark, associated with Minolta printers, was previously known in Canada. Given this finding, the onus then shifted to Tsai to establish that his MAGICOLOR mark was distinctive at the date of filing the statement of opposition.

On the issue of distinctiveness, the Federal Court held that the MAGICOLOR mark used by Tsai did not distinguish his goods from those of Minolta since (i) the marks were identical; and (ii) there was some commonality in the goods such that consumers might assume that the products originated from the same source (ie, Tsai's MAGICOLOR-branded computer cables could be used in association with Minolta's MAGICOLOR-branded printers).

Given that Tsai failed to establish that his MAGICOLOR mark was distinctive, the Federal Court found that he was not entitled to register the MAGICOLOR mark in Canada and, therefore, allowed the appeal.

It is of note that the board would have come to the same conclusion as the Federal Court if it had found that the reply evidence filed by Minolta was admissible. If admissible, the board would have seen the evidence as having established the use of the MAGICOLOR mark in Canada by Minolta at the relevant time. The onus would then have shifted to Tsai to demonstrate that his MAGICOLOR mark was distinctive and the board would have come to the conclusion that Tsai had not established the distinctiveness of his mark given that there was a potential overlap in the nature of the wares that might confuse consumers, especially in light of the fact that the marks were identical.

Rebecca Crane and R Scott MacKendrick, Ogilvy Renault LLP, Toronto