Opponents reminded of importance of brushing up on opposition grounds

In Procter & Gamble Inc v Colgate-Palmolive Canada Inc ([2010] FCJ 261, 26th February 2010) the Federal Court has dismissed an appeal against a decision of the Trademark Opposition Board in which the latter had rejected an opposition to the registration of a striped toothpaste design.

Procter & Gamble Inc (P&G) opposed Colgate-Palmolive Canada Inc’s application to register a striped toothpaste design (green/white/blue stripes) as a trademark (Application 760655). The Trademark Opposition Board dismissed all six grounds of opposition based on: 

• P&G’s failure to meet its onus of evidentiary burden. 
• Improper pleading.

P&G appealed. The issues before the court were: 

• The appropriate standard of review.
• Whether the board had erred in rejecting P&G’s grounds of opposition for registration of the design.

On appeal, P&G submitted new evidence which it claimed would have materially affected the board’s findings. Therefore, the court’s standard of review should be de novo. Conversely, Colgate argued that the standard of review should be based on whether the court found that the new evidence would have affected the board’s decision. The court held that the new evidence submitted by P&G was not significant enough to affect the board’s findings and did not justify a correctness of standard review.

An applicant bears the onus to establish that it is entitled to registration of a trademark. However, in opposition proceedings, the opponent has the initial burden to adduce sufficient evidence to support each ground of opposition.

In the present case, P&G claimed six grounds of opposition: 

• The application did not conform to the requirements of the Trademarks Act. 
• Colgate could not have been satisfied that it was entitled to registration of the trademark.
• The design was not registrable as it was primarily ornamental.
• The design was not registrable as it was primarily functional.
• The design was not registrable as it was not capable of acting as a trademark.
• The design was not distinctive or capable of distinguishing the goods in association with which it would be used by Colgate from the goods of others.

For the first two grounds of opposition, P&G was required to establish that Colgate could not have been satisfied that it was entitled to registration and that it never intended to use the design in Canada. In order to show that an applicant could not have been satisfied that it was entitled to registration of a trademark, the opponent needs to establish that the applicant acted in bad faith. P&G failed to provide evidence that Colgate had acted in bad faith and never intended to commence use of the design at the date of filing. Thus, the court found that P&G did not meet its initial evidentiary burden to establish the facts on which it relied, and held that the board’s decision in this respect was reasonable and should stand.

Regarding the third, fourth and fifth grounds of opposition, the board had rejected all three for being fundamentally defective. Improperly pled grounds cannot be considered. P&G pled that the design was not registrable as it was ornamental, functional and incapable of acting as a trademark. However, these are issues of law, not provisions of registrability. The court found that the board’s decision not to consider these grounds was reasonable for being defectively pled.

In the final ground of opposition, P&G claimed that the design was incapable of distinguishing goods of a single source. P&G argued that the colours blue, white and green and the striped pattern of the toothpaste were commonly used by other parties in the toothpaste industry. Its evidence focused on the existing striped toothpaste sold in Canada. P&G argued that toothpaste packaging was opaque and consumers would be unable to see the striped pattern at the time of purchase. Therefore, the design would not be capable of distinguishing its goods from those of others. Colgate successfully submitted evidence that toothpaste packaging could be clear and, therefore, the design was capable of being distinctive. In order for P&G to succeed on this ground of opposition, it needed to establish that the existing striped toothpaste had substantial and significant goodwill in Canada to contradict the distinctiveness of the design. P&G’s evidence did not establish the existing toothpaste’s reputation or the extent of its sales in Canada. The court found the board’s decision on this ground to be sound.

This case underlines the importance of proper pleadings and supportive evidence to ensure a successful outcome.

This article first appeared in World Trademark Review Daily, published by The IP Media Group (www.worldtrademarkreview.com).