Second serving of rice affidavits insufficient to overcome AMIRA trademark refusal
The Federal Court has denied an appeal from the decision of the Trade-Marks Opposition Board refusing the application of Amira Foods (India) Ltd to register the trade-mark consisting of the word “AMIRA” and an accompanying design.
The Applicant is an Indian corporation that sells its rice in Canada through an importer. The Respondent, a Canadian corporation that sells food products, holds the mark “AMIRA” registered in association with food products and the operation of an import/export business. The Respondent successfully opposed the Applicant’s registration (see the Opposition Board’s decision here) on the grounds that:
- contrary to subsection 30(e) of the Trade-marks Act, the Applicant had used the Mark in Canada prior to the filing date of the application, and
- contrary to paragraph 12(1)(d) of the Trade-marks Act, the mark is confusing with a registered trade-mark belonging to the Respondent
The Opposition Board allowed the opposition noting inconsistencies in the Applicant’s evidence as to the date of first use and holding that the public would be likely to interpret AMIRA as a coined word with inherent distinctiveness. The Opposition Board further held that there was no evidence that the average Canadian would be aware that AMIRA was the Arabic word for “princess”.
The Applicant then appealed the Opposition Board’s decision to the Federal Court. As permitted by subsection 56(5) of the Trade-marks Act, the Applicant adduced fresh evidence on appeal seeking to clarify the apparent in consistencies in its evidence before the Opposition Board and providing a Google search seeking to establish that “AMIRA” is a common name. The Applicant argued that this new evidence would have materially affected the Opposition Board’s decision such that it was entitled to a de novo review in the Federal Court with no deference accorded to the Opposition Board’s prior findings.
Justice Diner concluded that the new evidence seeking to clarify evidence given before the Opposition Board amounted to an assertion by the affiant that the Board erred in its interpretation of her testimony. As the new affidavit was merely duplicative of previous evidence and contained bald assertions without supporting documentation, it would not have materially affected the Opposition Board’s decision. The Court also rejected the new evidence of the Google searches on the basis that the search results did not all relate to the relevant time period and there were too few results (only 17) to lead to a different conclusion.
Absent any new evidence that would have materially affected the Board decision, Justice Diner held that the proper standard of appellate review was reasonableness. Holding that the Opposition Board did not make a reviewable error, Justice Diner dismissed the appeal.
A copy of the Court’s Judgment and Reasons can be found here.
