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New Evidence Ices Diamond Trade-Mark Registration

On December 2, 2014 Justice Kane of the Federal Court of Canada overturned a decision of the Trade-Marks Opposition Board and held that the application to register the trade-mark GHI was refused.

Gemology Headquarters International had applied to register the mark GHI in association with diamond grading and education in the field of gemology. The mark was initially opposed by the Gemological Institute of America, based on their registration of the trade-mark GIA for essentially the same services. The Opposition Board concluded that GIA was an inherently weak mark that was not well known and dismissed the opposition on the basis that GIA had failed to demonstrate the likelihood of confusion between the GIA and GHI marks.

GIA then brought a judicial review of the Opposition Board’s decision to deny the opposition. In such proceedings, the parties are entitled to adduce new evidence that was not before the Opposition Board. Where this new evidence would have materially affected the Opposition Board’s findings of fact or the exercise of its discretion, the Court is required to conduct a de novo review of the correctness of the decision. On the other hand, where the new evidence would not have materially changed the Opposition Board’s finding, the decision is subject to deference and is reviewable on the standard of reasonableness.

During the judicial review, the GIA adduced new evidence from a GIA Director, an employee of Birks, a trade-mark searcher and a professor of mineralogy to address deficiencies in the evidence that was before the Opposition Board. Justice Kane held that this new evidence addressed the issue of the acquired distinctiveness of the GIA mark, would have materially affected the Opposition Boards findings. Specifically, the new evidence and established that the reputation of the GIA mark was much more known than had been found by the Opposition Board:

[82] The new evidence of use of the trade-mark GIA and GIA’s reputation is both more significant and different in several respects than the evidence provided to the TMOB. The TMOB would have approached the analysis of the overall strength of the mark and the resemblance with GHI differently if it had recognized the reputation of the GIA mark.

While acronym marks may initially be inherently weak, they may acquire distinctiveness through use. Justice Kane concluded that because the GIA mark gained distinctiveness through use and reputation, it deserved protection and small differences in the mark of others will not longer be enough to avert confusion. As a result, Justice Kane granted GIA’s judicial review application and refused the registration of the GHI mark.

A copy of Justice Kane’s Judgment and Reasons may be found here.