The Federal Court of Canada (in CEDC International SP. Z O.O v Underberg KG and Underberg AG, 2016 FC 1172 CanLII) recently had the opportunity to consider a relatively rarely invoked prohibition against the registration of certain trademarks, namely that a trademark cannot be registered if it is the name of the goods or services. This prohibition, set out in Section 12(1)(c) of the Trade-marks Act, is broader than the Section 12(1)(b) prohibition on the registration of trademarks which are clearly descriptive or deceptively misdescriptive, in that the latter only covers words in the English and French languages, whereas the Section 12(1)(c) provision covers the name of the goods in any language.
In this case, the applicant was attempting to register the trademark Zubrówka in association with a flavoured vodka product, and the Trade Marks Opposition Board determined that it was not satisfied that the mark did not comprise a generic Polish word denoting a vodka flavoured with a particular type of grass known to be favoured by bison, and thus the name of the goods in the Polish language.
On appeal to the Federal Court, Justice Barnes determined that it was appropriate for the Court to review the complete evidentiary record, including evidence not referred to or addressed in the reasons of the Board. Having regard to the totality of the evidence, the Court held that the Board’s finding was reasonable, and the Court determined that the appropriate standard of review was reasonableness, since the new evidence was merely repetitive of the evidence which was adduced before the Board. The Court therefore held that if the outcome fell within a range of alternatives, or was not clearly wrong, then deference would be owed to the decision made by the Opposition Board.
The Court characterized the applicant’s evidence as being very weak, particularly when contrasted with the contrary and superior evidence of the opponents. In particular, the fact that the trademark was registered in other countries was not considered to be determinative, and the fact that a design mark had been registered in Canada was likewise not determinative as to whether registration of the word mark was prohibited. The decision of the Board was therefore affirmed, and the trademark Zubrówka was therefore denied registration in Canada.