Federal Court Applies Vavilov in Trademark Appeal

On March 12, 2020, the Federal Court of Canada (FC) released its decision in Pentastar Transport Ltd v FCA US LLC, 2020 FC 367.  This case represents the first time the FC has determined the standard of review for decisions of the Registrar of Trademarks since the recent Supreme Court of Canada (SCC) case of Canada (Minister of Citizenship and Immigration) v Vavilov, as previously reported by the E-TIPS® Newsletter here.

Pentastar dealt with an appeal from a decision of the Registrar of Trademarks to reject Pentastar Transport Ltd’s (PTL) opposition to FCA US LLC’s (FCA) trademark application.  The Registrar dismissed the opposition, holding that PTL had not met its evidential burden and alternatively, that FCA had met its legal burden to show that FCA did have a genuine intent to use the mark. 

On appeal, the FC applied the recent SCC case of Vavilov. Vavilov established that the presumptive standard of review of reasonableness is rebutted when the enabling statute provides for a statutory right of appeal.  Given the statutory right of appeal in section 56 of the Trademarks Act, the FC held that decisions of the Registrar of Trademarks should be reviewed on the appellate standard of review. 

In Pentastar, the issues were questions of mixed law and fact, and therefore the FC determined that the appellate standard of palpable and overriding error applied.  The FC cited the Federal Court of Appeal’s decision in Mahjoub v Canada (Citizenship and Immigration), 2017 FCA 157 for guidance on the definition of “palpable and overriding error”. The FC concluded that the Registrar did not make any palpable or overriding errors in her assessment of whether PTL met its evidential burden and alternatively, whether FCA met its legal burden. 

Summary By: Michelle Noonan