Servicemaster Company v. 385229 Ontario Ltd., 2014 FC 440

This was an appeal from a decision of the Trade-marks Opposition Board refusing two trade- mark applications filed by the Applicant, The Servicemaster Company (“Servicemaster”).  The applications were to register the trade-marks SERVICEMASTER CLEAN (the “Word  Mark”) and SERVICEMASTER CLEAN & Design (the “Design Mark”). The Respondent Ontario corporation is the owner of the registered trade-mark MASTER CLEAN.

With respect to the Word Mark, the Registrar found that the Respondent’s s. 16(1)(a) ground of opposition succeeded. With respect to the Design Mark, the Registrar found that the Respondent’s grounds of opposition succeeded with respect to s. 12(1)(d), s. 16(1)(d) and s. 2. On appeal, Servicemaster limited the challenge to the findings related to the above-noted grounds, and relied on a “new evidence” argument. The Court noted that the standard of review for appeals pursuant to s. 56 of the Trade-marks Act is reasonableness, unless new evidence is filed that would have materially affected the Registrar’s decision. Where additional evidence is filed, as there was here, and where is it found that the evidence would have materially affected the Registrar’s finding of fact or exercise of discretion, the Court must come to its own conclusions as to the correctness of the decision.

The Court found that Servicemaster failed to produce new evidence that would have materially affected the Registrar’s decision. Therefore, the Court had no need to exercise its discretion with respect to the Registrar’s findings, and thus dismissed Servicemaster’s appeal.