• Registrar’s decision refusing to grant leave to amend a statement of opposition found to be unreasonable
  • March 6, 2015 | Authors: Adrian J. Howard; Beverley Moore; Chantal Saunders
  • Law Firm: Borden Ladner Gervais LLP - Ottawa Office
  • Dairy Processors Association of Canada v. Dairy Farmers of Canada, 2014 FC 1054

    This is a judicial review of the decision to not allow the applicant to amend its Statement of Opposition to add new grounds of opposition against five applications for trademarks filed by the respondent. The Federal Court found the member erred in refusing to grant leave to amend the Statements of Opposition in issue.

    The Court found that it was appropriate to subject this interlocutory decision to judicial review. It was found that for it not to be subject to review, alternative remedies must be available in the context of the proceeding in issue. Since there were no other effective remedies for the applicant to introduce the new grounds of opposition that it puts forward, the decision was subject to judicial review at this stage.

    The Court took note of a practice notice which provides that leave to amend a statement of opposition will be granted if the Registrar is satisfied that it is in the interests of justice to do so having regard to all the surrounding circumstances including:

    1. the stage the opposition proceeding has reached;

    2. why the amendment was not made or the evidence not filed earlier;

    3. the importance of the amendment or the evidence; and

    4. the prejudice which will be suffered by the other party.

    In reviewing the Registrar’s decision, the Court found that an error in law was made in not allowing an opposition based on section 7 of the Trade-marks Act. A further error was found in not comparing the prejudice suffered by not allowing the amendment against the potential prejudice of allowing it. Therefore, the refusal to allow the amendment was found to be unreasonable and set aside.