Edited by Chantal Saunders and Beverley Moore , Adrian Howard and Ryan Steeves

Trademark Cases

Judicial Review of TMOB's Decision Dismissed; Court Awards Elevated Costs for Applicant's New and Inappropriate Argument

 Cohen v. Susan Fiedler Incorporated, 2014 FC 967

This was a judicial review of a Trade-marks Opposition Board ("TMOB") decision dismissing the Applicant's application for registration of the "F CANCER & Design" trademark (the "Applicant's Mark").The Applicant, Ms. Cohen, claimed use of the mark in Canada since September 2008 in association with t-shirts and a charitable foundation. The Respondent, however, asserted unregistered trademark rights to a family of trademarks, including "F CANCER", "F* CANCER", "F--- CANCER" and an additional (objectionable) trademark (collectively the "Opponent's Marks"), and that they had been used in Canada since May 2008 in association with jewellery and fundraising charities.

The TMOB dismissed the Applicant's application on the basis that the Respondent had established that the Opponent's Marks had been used in Canada prior to the claimed date of first use of the Applicant's Mark. In addition, the TMOB found that the Applicant had not demonstrated that there was no reasonable likelihood of confusion between the two Marks. Before the Court, the Applicant did not take issue with those findings, but instead raised a new argument: that the Respondent was in fact prohibited from using [the "F" word] since it is obscene and therefore contrary to s. 9(1)(j) of the Trademarks Act . The Court characterized the Applicant's argument as "counter-intuitive", since if it had been accepted, would have been fatal to her application. The Court exercised its discretion not to consider this argument since it was raised for the first time on judicial review, and was, in the Court's view, inappropriate. The Court therefore dismissed the Applicant's application for judicial review and awarded elevated costs to the Respondent in light of the Applicant's novel argument on judicial review.

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