Clorox V Chloretec: The Application Of Vavilov In The Trademarks Context

• Published date: 27 May 2020
• Author: Mr Kaleigh Zimmerman, Adam Chisholm, Pablo Tseng and Keith Bird
• Subject Matter: Intellectual Property, Government, Public Sector, Litigation, Mediation & Arbitration, Trademark, Constitutional & Administrative Law, Trials & Appeals & Compensation
• Law Firm: McMillan LLP

In April 2020, the Federal Court of Appeal issued its decision in The Clorox Company of Canada, Ltd v Chloretec SEC.1. The Chloretec decision provides explicit guidance from the Federal Court of Appeal on how the Supreme Court of Canada's decision in Canada (Minister of Citizenship and Immigration) v Vavilov2. is applied to appeals made under Section 56 of the Trademarks Act (the "Act"). The Chloretec decision is therefore of interest to any parties or practitioners who may challenge a decision of the Registrar of Trademarks or its delegate, the Trademarks Opposition Board ("TMOB").

The Vavilov Decision Changes Administrative Law

The Supreme Court of Canada ended 2019 by issuing a trilogy of landmark decisions in the judicial review arena that, among other things, collectively clarified the law on standard of review.3. The primary decision within this trilogy of decisions is Vavilov, which has a fact pattern that comes straight out of the Cold War. The Vavilov decision tackled a number of administrative law concepts revolving around the standard of review applied to administrative decision-makers and revisited the frameworks set out in previous decisions of the Supreme Court of Canada.

The particular learning from Vavilov that is the focus in Chloretec is the holding that appellate standards of review apply where a statute provides for an appeal from an administrative decision to a court.4. While this may sound trite in isolation, it had been the law for many years that appeals of administrative decisions would not have appellate standards applied, even if the governing statute required it. As a function of Canadian common law, the court previously applied administrative standards of review to all administrative decisions, regardless of the language in the statute.

The Chloretec Decision

The Chloretec decision is a Federal Court of Appeal decision considering a Federal Court's decision on an appeal of a TMOB matter.

Clorox opposed two of Chloretec's trademark applications for the registration of "JAVELO" and "JAVELO & DESIGN" in association with made-to-order bleach at the TMOB. Clorox opposed Chloretec's applications on a number of grounds, including alleged confusion with Clorox's own JAVEX trademarks registered in association with bleach. The TMOB dismissed the oppositions.

The Federal Court dismissed Clorox's appeal of the TMOB's decision, notwithstanding the supplementary evidence that was filed by Clorox under subsection 56(5) of the Act.

Both the...