McDowell has been opposing the registration of Automatic’s trademark application for HONEY B. FLY. The application was filed in 2009, and the opposition has been ongoing since. In August 2014, 10 days before hearing, McDowell sought leave to file an Amended Statement of Opposition. The amendment would add a new ground pursuant to s.12(1)(d) of the Trade-marks Act which changes the evidentiary burden needed to show the use of the registered marks. The Trademarks Opposition Board refused leave to amend, leading to this appeal.
The Court questioned whether it could intervene on this interlocutory appeal. McDowell argued that this is a special circumstance where the Court should intervene because there is no remedy available to McDowell within the administrative process. McDowell argued that she would otherwise be precluded from raising arguments based on section 12(1)(d) before the Opposition Board or on appeal. Automatic argued alternative judicial proceedings were available, either commencing an action or seeking expungement.
Ultimately the Court found that this was not a special circumstance warranting intervention and holding that the amendment would amount to “splitting the case”. In doing so, the Court distinguished the holding in Dairy Processors Association of Canada v Dairy Farmers of Canada, 2014 FC 1054 and followed Indigo Books & Music Inc v C & J Clark International Ltd, 2010 FC 859