Rothmans, Benson & Hedges Inc. v. Imperial Tobacco Products Ltd.,2014 FC 300

This is an appeal under s. 56 of the Trade-marks Act from a decision of the Trade-marks Opposition Board (TMOB) in relation to two trade-marks filed by Imperial Tobacco Products Ltd (ITPL). Both applications relate to orange package design. Rothmans, Benson & Hedges Inc. (RBH) opposed both applications, but the TMOB rejected both oppositions. The Court noted that in separate proceedings, another tobacco company had also opposed the same two applications, but had been unsuccessful (decision here, summary here).

Both parties adduced new evidence on appeal. However the Court held that the new evidence would not have materially affected the TMOB’s decision. Thus, the Court agreed that the reasonableness standard was applicable to the appeal. The Court then held that the TMOB’s decision was reasonable, as it fell within the range of possible, acceptable outcomes which are defensible in respect of the facts and in law.