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The Deferential Nature of The Palpable and Overriding Error Standard Revisited

The Facts

The Applicant filed a trademark application to register the mark TRIBAL CHOCOLATE, for use in association hair care preparations. The examiner objected to the application because it was confusing with the registered trademark TRIBAL registered for use in association with, among other goods, hair colourants and hair dyes.


The Applicant entered into a co-existence agreement with the owner of the TRIBAL mark. The Applicant also amended the statement of goods in its application to restrict the channels of trade for its goods. The application as amended 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.


Despite the Applicant’s arguments, the amendment, and the co-existence agreement the examiner refused the application.


The Applicant appealed from the refusal to the Federal Court. The court concluded that the Examiner made no overriding and palpable error, and the appeal was dismissed. We discussed this decision previously in our blog "A Palpable and Overriding Error Must Be Shown To Successfully Appeal From An Examiners Refusal".


The Appeal to the Federal Court of Appeal

The applicant asserted that the Federal Court and the Examiner made several errors.  The primary submission was that the Federal Court had erred in upholding the Examiner’s assessment of likely confusion. It objects to the Court’s consideration of the state of the Register evidence and the co-existence agreement between the appellant and the owner of TRIBAL. Tweak-D Inc. v. Attorney General of Canada 2023 FCA 238


The Court said that the standard of review on this appeal was correctness for questions of law and palpable and overriding error for questions of fact and questions of mixed fact and law unless there was an extricable error of law.


The applicant relied on the fact that the cited mark had been registered over the mark TRIBAL INDULGENCES. The Court said that it was generally irrelevant that a mark may have been registered in the past; each application must be assessed on “its intrinsic value, the proposed services, and its particular context”: Even if an examiner has erred on a prior application, a subsequent examiner is not required to perpetuate the error: 


In response to the assertion that the Federal Court inappropriately discounted the significance of the co-existence agreement, the Court said a registered trademark owner’s consent to the registration of a competing trademark is not dispositive of registrability. It is one factor that may be considered. It was open to the Examiner to conclude that the co-existence agreement, while relevant, did not trump the other factors in subsection 6(5) of the Act. Further it was not the role of the Federal Court in a statutory appeal or the Federal Court of Appeal on a second appeal to reweigh the evidence.


It was found that the applicant had not shown that the Federal Court made a reversible error in upholding the Examiner’s decision and the appeal was dismissed.


Comment

As we previously mentioned 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.


It is well established in Canada that a registered trademark owner’s consent to the registration of a competing trademark is not binding on the Trademark Office but is a factor that may be considered.


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 Email: mckeown@gsnh.com


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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