Analysis of all Canadian IP Court decisions in 2023

Welcome to 2024. It is a busy time of year for us all. With that in mind, we have read every reported IP Court decision of 2023 so you don’t have to.

Over the next few weeks we will be reporting the data. For example:

• How many trials and motions were decided and how often did the plaintiff or moving party win? Are there trends? What happened on costs?
• On appeals from the Trademarks Office to the Court: was was the success rate? Does filing new evidence assist?
• What is the success rate of appeals to the Federal Court of Appeal?

We will also be analyzing some relatively unique issues that arose in 2023 such as motions for contempt and class actions involving IP. It is going to be an interesting journey, so stay with us.

Appeals from Trademarks Office to the Federal Court

First, we will address appeals from the Trademarks Office to the Federal Court pursuant to section 56 of the Trademarks Act. These appeals relate to section 45 decisions and oppositions.

Section 45 creates a summary procedure to remove registered trademarks from the Trademarks Register for non-use. An opposition, on the other-hand, is a challenge to a trademark application before it is registered.

Both procedures are administered and decided by the Trademarks Office. Pursuant to section 56 of the Trademarks Act, a party may appeal a decision to the Federal Court. No leave to appeal is required. The appealing party is referred to as an “Applicant”. The law in Canada permits an Applicant to file new affidavit evidence on appeal. If the new evidence is found to be material which has been been interpreted to mean “sufficiently substantial and significant” and of “probative value” subsection 56(5) of the Trademarks Act permits the Federal Court to reach its own conclusion and decide the issue de novo considering all of the evidence before it. 

Section 45 Appeals

In total, nine appeals were reported in 2023. In every appeal, the Applicant filed new affidavit evidence supporting its position. Each appeal was either fully or partially successful. The pie chart below shows the split:

Oppositions

In total, five appeal decisions were reported in 2023. New affidavit evidence was filed in three appeals. All appeals were unsuccessful and dismissed. Of note, one appeal from the Federal Court to the Federal of Appeal was reported in early 2023 (2023 FCA 4). The appeal was dismissed affirming the decision below that allowed an appeal of the decision of the Opposition Board.