The New Standard Of Review In Trademark Opposition Appeals: Federal Court Of Appeal Calls For A "fresh Start"

• Published date: 18 May 2020
• Author: Mr Andrew Bernstein, Michelle Nelles, Nicole Zeit and Emily Sherkey
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Trademark, Trials & Appeals & Compensation
• Law Firm: Torys LLP

In two recent decisions, both the Federal Court¹ and the Federal Court of Appeal² have confirmed that the new Vavilov standard of review applies to a Trademark Opposition Board (TMOB) decision appeal under the Trademarks Act.

What you need to know

• Previously, the applicable standard of review on appeals of TMOB decisions was highly deferential. Absent new evidence on appeal that would have materially impacted the outcome, the courts were unlikely to interfere with these decisions. However, the Federal Court of Appeal has confirmed that the Supreme Court of Canada's recent decision in Vavilov changes that approach.
• This has three major implications for companies or individuals considering an appeal from a TMOB decision
  • The courts will be more willing to interfere in these decisions where they raise pure questions of law.
  • Depending on the issues raised in the appeal, parties may not need to incur the substantial costs of providing new evidence in order to attract a less deferential standard of review.
  • Parties should be cautious about relying on past jurisprudence where the court applied a deferential standard of review.

Historically deferential approach to appeals from TMOB decisions

The standard of review has an important impact on appeals from administrative decision-makers. It dictates how much deference the appellate court will give to that decision. If the correctness standard applies, the court will grant the decision-maker no deference and will conduct the analysis afresh. If the reasonableness standard applies, the court will defer to the decision-maker absent fatal flaws that may make the decision unreasonable, such as a decision that is not based on internally coherent reasoning or where the decision is not justified in light of the legal and factual constraints bearing on the decision.

Historically, the courts have been highly deferential to TMOB decisions on both factual and legal issues. Even though there is an express appeal provision in the Trademarks Act to the Federal Court, the Court provided considerable deference to the TMOB because of its expertise.

Until recently, the applicable standard of review from the TMOB was well-settled. While the parties have the right to file new evidence, if they did not do so, or if the evidence was found to be immaterial, the standard was reasonableness.

In two recent decisions, the courts confirmed that this historic approach has been replaced by a correctness standard on issues of law. In other...