A recent decision of the Trade-mark Opposition Board (“the Opposition Board”) has confirmed the admissibility of evidence obtained by using the Wayback Machine.
In this case the applicant applied for a trade-mark based on use in Canada since at least February of 2002. The application was opposed on the grounds that, among others, the application did not comply with the requirements of the Trade-marks Act (“the Act”) because the applicant had not used the trade-mark in Canada in association with the applied for wares and services since the date of first use.
The hearing officer observed that the applicant bears the legal onus of establishing, on a balance of probabilities, that its application complies with the requirements of the Act. There is, however, an initial burden on the opponent to present admissible evidence from which it could reasonably be concluded that the facts alleged to support each ground of opposition exist.
To the extent that the relevant facts relating to a ground of opposition based on such non-compliance are more readily available to the applicant, the evidentiary burden on the opponent in respect of such ground is lower. In addition, the opponent may rely on the applicant’s evidence if it is inconsistent with the applicant’s claim.
In this case the opponent filed the affidavit of an articling student which contained the results of a search conducted through the Internet Archive website known as the Wayback Machine relating to the applicant’s mark. The student printed copies of pages from specific dates in 2002 of archived versions of the applicant’s website as well as an event calendar which was reproduced at the site.
The student was cross-examined on his affidavit and specifically asked whether he was aware the Wayback Machine site contained a list of limitations, which included the following:
When a dynamic page of a website contains forms, java script or other elements that require interaction with the originating host, the archive will not contain the original site; and
When you’re looking at the collection of archive sites, one will find sometimes broken pages and missing graphics.
The student admitted he hadn’t seen these limitations and he did not know whether the printouts obtained represented a complete representation of the entire website, including the graphics and functionality, as it existed in February 2002.
The hearing officer accepted the admissibility of the evidence produced by the Wayback Machine and that it was generally reliable. Reference was made to another decision of the Opposition Board which had concluded that such evidence was suitable for satisfying the light initial burden under grounds of this type. However, notwithstanding the conclusion concerning admissibility, the hearing officer was not prepared to conclude that the evidence was sufficient to satisfy the initial burden on the opponent that the applied for mark had not been used at least as early as February 2002.
In trade-mark oppositions issues relating to past use of a trade-mark frequently arise. In this regard it is useful to make use of evidence obtained by using the Wayback Machine. However, as noted above, counsel must keep in mind the potential problems with this type of evidence.