TMOB Decision On "The Confusion Issue" Not Binding On Federal Court

On January 22, 2019, the Federal Court of Canada in Mainstreet Equity Corp v Canadian Mortgage Capital Corporation et al. clarified that a finding relating to confusion in a Trademarks Opposition Board ("TMOB") decision, even if unappealed, is not binding on the Federal Court in a subsequent trademark infringement or passing off action.

Specifically, Prothonotary Aalto refused to grant Mainstreet leave to amend its Statement of Claim in a passing off action to add allegations of issue estoppel, res judicata, abuse of process and the rule against collateral attack (collectively, the "estoppel arguments"). Mainstreet had claimed that because one of the Defendants had not appealed a TMOB decision rejecting its application for a trademark at issue in the litigation, and because the Defendants were "privies", they were bound by the TMOB decision and its finding on the confusion-based opposition ground.