In 2718971 Ontario Inc. v. Kinde Company Ltd., 2025 FC 1114, the Federal Court considered an appeal from a decision of the Trademarks Opposition Board (the “TMOB”) where the opponent’s primary ground of opposition was that the distinctiveness of the applicant’s trademark had been negated by the opponent’s use of a similar trademark after the application was filed but before it was opposed. The opponent was unsuccessful before the TMOB and on its appeal to the Federal Court. The main issue on the appeal was whether the TMOB had held the opponent to too high an evidentiary standard in requiring the opponent to produce actual “evidence of negation”.
Shift Law acted for the successful applicant before the TMOB and the Federal Court. We wrote about the TMOB’s decision in a previous post.
Background
In the months after the applicant had applied to register KINDE COMPANY for a variety of goods and services, including magazines, but before the application was opposed, the opponent began distributing a free cannabis lifestyle publication called Kind Magazine. The opponent opposed the application on the ground that its intervening use of KIND in association with Kind Magazine had rendered KINDE COMPANY incapable of distinguishing the applicant as a trade source and, as such, un-registerable.
In support of its opposition, the Opponent relied on evidence that it had distributed many thousands of copies of its magazine through third party retail locations in the relevant period. The Opponent argued that its evidence satisfied the test in Bojangles’ International LLC v Bojangles Café Ltd, 2006 FC 657 (“Bojangles”), namely, that use of a trademark can negate the distinctiveness of another mark if that use is sufficient to prevent the other mark from being distinctive.
The TMOB acknowledged that the opponent had used its KIND trademark to some extent in the relevant period and that there was no evidence that KINDE COMPANY had been used at all. But the TMOB dismissed the opposition on the basis that there was “no evidence of negation”, that is, no evidence that the opponent’s use of its mark had negated the inherent distinctiveness of the applicant’s mark.
The opponent appealed the TMOB’s decision, arguing that Bojangles did not require it to produce actual “evidence of negation” since negation of distinctiveness could be inferred from the evidence that its magazine had acquired a reputation before the applicant’s mark was even used.
The Federal Court decision
The Federal Court dismissed the opponent’s appeal. In his decision, Justice Manson wrote that “establishing use of the mark is one thing but negating the distinctiveness of another is something else”. He found that the opponent’s evidence that its magazines were distributed to retailers was not evidence of how well its trademark had become known to the relevant consumer, noting that there was “no evidence as to what the cannabis retailers actually did with the magazine, and how many Canadian customers viewed the magazine in stores or visited the Applicant’s website.” He concluded that the opponent had provided no “reliable evidence of reputation”.
Takeaways
The Federal Court’s decision provides important guidance to opponents relying on the Bojangles ground of opposition. An opponent who relies on this ground will not only need evidence that it has used the applicant’s mark or a similar mark in the relevant period but also evidence that such use has given the opponent a reputation that is sufficient to prevent the applicant’s mark from being distinctive.
