A recent decision of the Trade-marks Opposition Board illustrates the importance of specifying the date of first use in a trade mark application with care.
The applicant, for some of its services, claimed a date of first use at least as early as September 1989. The opponent opposed the application on a number of grounds including non-compliance with the Act on the grounds that the applicant had not used the mark since at least as early as September 1989 in association with the applied for services. Both parties filed evidence relating to whether the applicant had used its mark in association with services at the relevant date. The Hearing Officer made a number of observations concerning this ground of opposition.
The Evidential Burden
There is an evidential burden on the opponent to establish the facts relied upon in support of each ground of opposition. Once this initial onus is satisfied, the applicant has the burden of proving that the particular grounds of opposition should not prevent registration of its mark.
To the extent that the relevant facts are more readily available to the applicant, the evidentiary burden on the opponent is lower. The opponent may rely on the applicant's evidence to meet its initial onus but the opponent must show that the applicant's evidence is clearly inconsistent with the applicant's claim.
It is permissible to file an application without specifying a precise day during the month. In such a case, the date of first use is considered to be the last day of the month.
The case law recognizes that an applicant may claim a date subsequent to the actual date of first use out of abundance of caution and in the interest of greater certainty. When the Hearing Officer considered the evidence, he concluded that the opponent had not put forward any evidence of its own, which raised substantial doubts concerning the date of first use claimed in the application. In addition, there was nothing inconsistent or contradictory in the applicant's evidence. As a result, the opponent did not discharge its evidential burden and this ground of opposition was dismissed.
Since any application can be opposed, it is important when an application is based on use that the applicant be in a position to prove that it did in fact begin to use its mark on the date specified in the application. Sometimes it is prudent to specify a month instead of a specific day.