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One-sided assessment of prejudice undermines decision regarding amendment of trademark Statement of Opposition

In Anheuser Busch LLC v H.O.W. Medical Solutions Ltd., 2022 FC 842, Justice Walker set aside a decision by the Trademarks Opposition Board to refuse Anheuser Busch’s request to amend its Statement of Opposition.

H.O.W. Medical applied to register the trademark HELPING PEOPLE FEEL BETTER ONE BUD AT A TIME in association with cannabis products. Anheuser Busch opposed the registration and referred to their Budweiser beer trademarks its Statement of Opposiiton. Shortly after the Opposition was filed, three Budweiser trademarks associated with cannabis matured to registration. Anheuser Busch sought to amend its Opposition to include these registrations. H.O.W. Medical objected to the proposed amendments and the Board refused Anheuser Busch’s request because H.O.W. Medical would be prejudiced by having to address trademarks relevant to cannabis that were not present in the original Statement of Opposition.

On appeal, Justice Walker held that, although the Board made no pure error of law in denying Anheuser Busch’s request to amend its Statement of Opposition, it failed to consider the resulting prejudice to Anheuser Busch. This failure undermined the Board’s decision, which the Federal Court found was not reflective of the evidence nor explained with intelligible reasons.

The Court held that the Board failed to recognize the significance of the proposed amendments to Anheuser Busch’s opposition. In emphasizing the broad scope of protection already afforded to Anheuser Busch’s large family trademarks, the Board diminished the importance of the additional registered marks added in the proposed amendment. However, since none of the trademarks originally referred to in the Statement of Opposition included goods or services related to cannabis, and H.O.W. Medical’s Mark was to be used in association with cannabis products, the Board’s analysis did not adequately address the impact that including registrations associated with cannabis would have on the opposition by Anheuser Busch.

Since the Board considered the amendments to be of limited importance, the prejudice suffered by Anheuser Busch in being unable to rely on them would be similarly insignificant. This led the Board to engage in a one-sided analysis, which considered the prejudicial effect of the proposed amendment on H.O.W. Medical while ignoring the converse prejudice that Anheuser Busch would suffer in being unable to rely on their cannabis-associated registrations. Justice Walker also noted that H.O.W. Medical could have been given time to formulate a reply to Anheuser Busch’s proposed amendments, given the early stage of the proceedings.

Taken together, this unbalanced assessment of prejudice led Justice Walker to remit the Board’s decision regarding Anheuser Busch’s amendment to its Statement of Opposition for redetermination.

The full decision can be read here.