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A Palpable and Overriding Error Must be Shown to Successfully Appeal From an Examiners Refusal

A Palpable and Overriding Error Must be Shown to Successfully Appeal From an Examiner's Refusal Tweak-D Inc. v. Attorney General of Canada 20223 FC 427


The Facts

The Applicant filed a trademark application to register the mark TRIBAL CHOCOLATE, based on use since August 31, 2016. The Applicant sought to register the mark for hair care preparations. The examiner objected to the application on the ground that it was confusing with the registered trademark TRIBAL, registered on June 13, 2012, and based on use since 2008. The TRIBAL trademark is registered for use in association with, among other goods, hair colourants and hair dyes.


The Applicant commenced a proceeding under section 45 of the Trademarks Act, seeking expungement of the TRIBAL mark. The proceeding was discontinued upon the Applicant reaching a co-existence agreement with the owner of the TRIBAL mark. Under the agreement, the parties agreed that:


1. The Applicant will sell its goods to mass-market retailers, drugstores, home shopping channels or internet retailers, but excluding beauty salons and spas.

2. Neither party will change the depiction of their respective trademarks to increase their similarity with the branding or form previously adopted by the other party.

3. Neither party is to promote its goods in a manner which could cause confusion or indicate there may be an association with the other party.


The Applicant also agreed to amend the statement of goods in its trademark application to restrict the channels of trade for its goods, so the application read: hair care preparations, … intended for distribution to mass market retailers, drugstores, home shopping channels or internet retailers, but specifically excluding beauty salons and spas.


The Examiner’s Refusal

Despite the Applicant’s arguments the examiner refused the application. The examiner said the test for confusion was one of first impression and the vague or imperfect recollection of the ordinary consumer or purchaser of goods, while the subsection 6(5) factors are non-exhaustive and the relevance of each factor may vary depending on the case, resemblance is the factor likely to have the greatest effect on the analysis.


There is strong resemblance between the TRIBAL and TRIBAL CHOCOLATE marks. Trademarks incorporating the whole of another mark are often found to be confusing notwithstanding the inclusion of additional words or design features. The first word of a trademark is the most important for the confusion analysis.


The channels of trade and nature of goods overlap. While the Applicant had amended its registration to restrict trade in beauty salons and spas, the owner of the TRIBAL mark had not amended its registration to confine its trade exclusively to beauty salons and spas.

The state of the register evidence did not reveal a “clear pattern of registrability” of marks similar to TRIBAL CHOCOLATE or TRIBAL. While the TRIBAL mark was registered despite the registration of the TRIBAL INDULGENCES mark this did not establish a “clear pattern of registrability”. An average Canadian consumer would be confused between the two trademarks.


The fact that there had been no actual confusion despite concurrent use of the TRIBAL and TRIBAL CHOCOLATE marks since 2016 was not determinative when assessing likelihood of confusion.


The co-existence agreement was a factor to be considered and while it favoured the Applicant, it did not waive the criteria under section 6 of the Trademarks Act.


The Federal Court

The Applicant appealed from the refusal to the Federal Court.

Generally, on appeal the applicable standards of review are the appellate standards. For questions of law and mixed fact and law where a legal question is extricable, the standard is correctness. For questions of fact and questions of mixed fact and law without an extricable legal question, the standard is whether the decision maker made an overriding and palpable error. However, when additional evidence is adduced on appeal that would have a material impact on the Registrar’s decision, the Court may step into the shoes of the Registrar, reassess the evidence, and answer questions of fact on a standard of correctness. Unfortunately, none of the evidence filed on appeal was material.


The Applicant argued there was an apparent inconsistency in allowing the registration of the TRIBAL mark given the previous registration of TRIBAL INDULGENCES and refusing the TRIBAL CHOCOLATE application considering the TRIBAL registration. However, the court noted if the examiner erred in the past, the next examiner does not have to perpetuate that error.


Concerning the reference to the absence of a “clear pattern of registrability” for marks that include the word TRIBAL, the examiner appears to refer to the cases which have found state of the register evidence particularly compelling but have generally involved far more than three relevant registrations.


The Examiner made no overriding and palpable error, and the appeal was dismissed.


Comment

Previously the standard of review was “reasonableness” which is a little more open-ended than the current standards. The current standards result from the Vavilov decision of the Supreme Court of Canada. The palpable and overriding error standard is highly deferential and authorizes appellant intervention only where an error is both obvious and determinative of the outcome. This is the second occasion the Federal Court has sent the same message see https://www.johnmckeownblog.com/post/what-is-a-palpable-and-overriding-error

The emphasis should be on advocacy at the examination stage and, if this fails, filing material new evidence if possible, on appeal.


If you have questions, please contact me at mckeown@gsnh.com.


Goldman Sloan Nash & Haber LLP

480 University Avenue, Suite 1600

Toronto, Ontario M5G 1V2

Direct Line: (416) 597-3371

Fax: (416) 597-3370


These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.


A version of this article originally appeared in the Law360 Canada published by LexisNexis Canada Inc.

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