On March 28, 2023, the Federal Court of Canada (the Court) issued its decision in Tweak-D Inc v Attorney General of Canada, 2023 FC 427, dismissing Tweak-D Inc’s (the Applicant’s) appeal from a decision of the Registrar of Trademarks (the Registrar) refusing an application to register the trademark TRIBAL CHOCOLATE, in relation to hair care products, because it was confusing with a registered trademark for TRIBAL.

On January 6, 2017, the Applicant filed an application to register the word mark TRIBAL CHOCOLATE, based on use since August 31, 2016.  During examination, the Registrar cited an existing registration for TRIBAL for hair colourants and hair dyes, among other goods.  In response, the Applicant filed written submissions, state of the register evidence, and a co-existence agreement with the registered owner of the TRIBAL mark.  The Registrar refused the application on July 13, 2022, finding the mark unregistrable on the basis of confusion with the TRIBAL registration.  The Applicant appealed the refusal to the Court.

On appeal, the Court determined that the Applicant’s new evidence, namely, file histories of third party registrations, were immaterial, and therefore the applicable standard of review was overriding and palpable error.

The Applicant argued that the trademark TRIBAL CHOCOLATE should be registrable given the state of the register.  However, the Court dismissed this argument, noting that cases which have found state of the register evidence particularly compelling have generally involved far more than three relevant registrations as evidence.  The Court also noted that there was no actual use of the third party marks, and the state of the register evidence alone does not support a finding that the Registrar committed a palpable an overriding error.  Interestingly, Justice Manson noted that “[w]hile the Court may not necessarily agree with the decision, it is not the role of the Court to consider the correctness of the Registrar’s decision based on the facts here.”

Ultimately, the Court concluded that the Registrar made no palpable and overriding errors in considering the confusion factors and the relevant evidence, including the state of the register, the co-existence agreement and no evidence of actual confusion since 2016, and finding that there was a likelihood of confusion between the marks TRIBAL CHOCOLATE and TRIBAL.

Summary By: Sharan Johal


23 04 19

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