Federal Court Rejects Summary of Surveys Contained in Affidavit of Fact Witness

On April 16, 2018, the Federal Court released its decision in Clorox Company of Canada, Ltd v Chloretec sec, 2018 FC 408. In that decision, the Court rejected an appeal from a decision of the Trade-marks Opposition Board (TMOB), rejecting Clorox’s opposition to Chloretec’s application for the mark JAVELO. The TMOB rejected the opposition in part because Clorox submitted no evidence of use nor of the extent of acquired distinctiveness of its JAVEX trademarks. On appeal, Clorox submitted an affidavit that contained a summary of surveys purporting to show the use and distinctiveness of JAVEX in Canada, but not the surveys themselves.

The affidavit submitted on appeal summarized the findings of two surveys. The first, carried out in 2006/2007, purportedly confirmed significant sales of JAVEX in Canada in 2007. The second, conducted in 2013, purportedly showed the awareness of JAVEX in Canada in 2013. Clorox provided no documents supporting its claims about the first survey, and provided only an excerpt of a chart which it claimed showed awareness of JAVEX which appeared in the second survey. No information was provided regarding the survey’s methodology, nor did Clorox provide the identity of the firm that conducted the survey.

The Court did not consider either survey as part of the evidence. The Court cited the Supreme Court in Mattel, Inc v 3894207 Canada Inc, 2006 SCC 22 for the proposition that a Court must assess the methodology behind a survey to conclude that the survey is both reliable and valid. Further, the Court found that such evidence should be submitted by means of an affidavit of an expert who conducted the survey providing sufficient information in relation to its methodology.

The Court went on to deny the appeal. Most significantly, the Court found that the JAVEX and JAVELO trademark were not particularly similar, as any similarities between them result from a prefix which corresponds to the common noun “eau de Javel” in French. The Court found that, as a result, neither mark possessed a great degree of inherent distinctiveness, as traders are not permitted to appropriate words of a general nature.

Of particular interest to trademark practitioners, the Court also commented in obiter that it is “far from certain” that section 30(b) of the Trademarks Act requires the denial of an application based on use in Canada, if an opponent is able to show the mark was used to a certain extent before the date claimed in the application. The Court recognized that the Registrar has come to this result in some of its decisions, but noted that it has not been referred to any decision of the Federal Court that sets out such a rule.

Summary By: David Bowden