Federal Court Of Appeal Addresses New Standard Of Review For Trademark Opposition Appeals

• Published date: 02 June 2020
• Author: Ms Chantal Saunders, Beverley Moore, Adrian J. Howard, Carina De Pellegrin, David Schnittker and David Chapman
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Borden Ladner Gervais LLP

The Clorox Company of Canada, Ltd. v. Chloretec S.E.C., 2020 FCA 76

This is an appeal of a Federal Court (FC) decision, in which the Court upheld the decision of the Trademark Opposition Board (TMOB), rejecting Clorox's opposition to two trademark applications by Chloretec. The Federal Court of Appeal (FCA) dismissed the appeal.

Chloretec filed trademark applications to register two trademarks, JAVELO and JAVELO & DESIGN, based on proposed use in association with "eau de javel". The list of goods was later amended. Clorox filed statements of opposition on a number of grounds, namely that the applications were contrary to section 2, paragraphs 12(1)(d), 16(3)(a) and (b), 30(b) and section 50 of the Trademarks Act. Clorox filed evidence of its JAVEX trademark registrations and Chloretec filed evidence. The TMOB rejected the opposition.

Clorox appealed pursuant to section 56(1) of the Trademarks Act, filing new evidence. Clorox alleged the Registrar erred in finding no confusion between the JAVELO marks and the JAVEX marks; that the JAVELO marks were distinctive of Chloretec; and that use of the JAVELO marks did not take place prior to the filing date of the applications. The FC dismissed the appeal.

The FCA considered the standard of review in light of the decision of the Supreme Court of Canada (SCC) in Canada (Minister of Citizenship and Immigration) v. Vavilov, 2019 SCC 65 (Vavilov). The FCA concluded Vavilov has no effect on the standard of review the FCA must apply when reviewing the FC's findings in relation to the materiality of new evidence. The reason for this is that the FC is not acting as a reviewing court but as a court of first instance in respect of the new evidence. As a result, the FC decision must be reviewed on an appellate standard. It is a question of mixed fact and law and thus the appropriate standard is a palpable and overriding standard.

When the new evidence is found to be material, section 56(5) of the Trademarks Act states that the FC "may exercise any discretion vested in the Registrar". The FCA noted that this is in the nature of an appeal de novo and is assessed on the correctness standard. While in Vavilov it is clear that reasonableness is the presumptive standard of review when a court reviews the merits of an administrative decision, the presumption will be rebutted in the face of a clear indication in the legislation that a different standard should apply. Section 56(5) of the Trademarks Act provides such an indication...