In Canadian trademark opposition proceedings, the legal burden is on the party applying to register the trademark to demonstrate, on a balance of probabilities, that its trademark is registrable. However, before that legal burden takes effect, there is an initial evidential burden which the opponent must meet in support of its grounds of opposition. In particular, the opponent is required to put forward evidence of at least some facts which, if true, would support the grounds of opposition being asserted. 

Only once this initial evidential burden is met by the opponent does the legal burden then shift to the applicant to demonstrate that its application complies with the Trademarks Act and Regulations. While the initial evidential burden on the opponent is generally quite light, if it is not met for a specific ground of opposition, then that ground of opposition will not be considered by the Trademarks Opposition Board.

In most instances, the opponent attempts to meet its initial evidential burden by preparing and filing its own evidence. However, a recent decision of the Opposition Board in 911979 Alberta Ltd and Shoppers Drug Mart Inc v Hero Nutritionals Inc (“Alberta”), 2014 TMOB 72, reinforces the principle that, in certain circumstances, the opponent can meet its initial evidential burden, and even succeed in the opposition overall, by relying solely on evidence filed by the applicant.

In Alberta, the applicant Hero Nutitionals, Inc., filed an application to register the trademark SLICEOFLIFE claiming prior use of the trademark in Canada since January 8, 2008 in association with “dietary supplements, namely, vitamins and minerals”. 911979 Alberta Ltd. and Shoppers Drug Mart Inc. opposed the application on multiple grounds, including that the applicant had not used the mark in Canada since the date of first use claimed in the application. Under Canadian law, if an applicant claims a date of first use which is earlier than the actual date of first use, the application in its entirety is deemed invalid.

In support of its application, the applicant filed an affidavit from a company representative attesting to the use of the trademark in Canada in association with the products listed in the application. The opponents did not cross-examine the applicant’s affiant on the affidavit. Notably, the affidavit stated that the applicant had sold products in association with the trademark in Canada “(s)ince at least June, 2008”. The affidavit also included summaries of invoices for the products sold in Canada, the earliest of which was dated June 18, 2008. No evidence filed by the applicant was consistent with the January 8, 2008 date of first use claimed in the application. Rather, all of the applicant’s evidence was consistent with a date of first use at the earliest in June 2008.

The opponents did not file any evidence which related to the applicant’s claimed date of first use. Instead, the opponents sought to rely on the inconsistency between the applicant’s own evidence and the claimed date of first use in the application as being sufficient to meet the opponents’ initial evidential burden. The applicant contended that since there was nothing in the affidavit which expressly stated that the mark had not been used in Canada as of the date claimed in the application, the opponent was obliged to challenge the affiant on the issue by way of cross-examination if it wished to rely on any inconsistency between the affidavit and the application.  

Ultimately, the Opposition Board held that the opponents had satisfied their initial evidential burden of demonstrating an incorrect date of first use, based solely on the applicant’s affidavit. As the applicant’s affidavit was consistent with a later date of first use and clearly inconsistent with the claimed date of first use, the Opposition Board held that there was no requirement for the opponents to cross-examine the affiant on that issue. The Opposition Board indicated that the applicant should have put forward the best evidence available and not relied on possible cross-examination as a means to correct deficiencies in its own evidence. Since the applicant had not filed any additional evidence to substantiate its claimed date of first use of January 8, 2008, the Opposition Board upheld this ground of opposition and the application in its entirety was refused.   

The Alberta decision serves as a useful reminder for potential opponents that it is possible to shift the legal burden to the applicant based solely on the applicant’s own evidence. In addition, the decision reinforces the need for applicants to put their best foot forward when preparing evidence to ensure that it does not contain inconsistencies which could be relied on by the opponent to satisfy its initial evidential burden.