Federal Court Refuses To Consider New Arguments On Judicial Review Of TMOB Decision

On October 14, 2014, the Federal Court released its judgment in Cohen v Susan Fiedler Incorporated, 2014 FC 967, dismissing the application of Yael Cohen (Cohen) for judicial review of a decision of the Trade-marks Opposition Board (TMOB) dismissing Cohen’s application to register the trade-mark F CANCER & Design (shown below) in association with apparel, namely t-shirts, and in association with the operation of a charitable foundation concerned with the detection and prevention of cancer. Cohen’s application to register the F CANCER & Design mark was opposed by the Respondent, Susan Fiedler Incorporated (Fiedler), which on opposition, asserted unregistered trade-mark rights to similar marks including F--- CANCER (the Fiedler marks). The Fiedler marks have been in use in Canada since May 2008 in association with jewellery and fundraising charities relating to cancer. The mark applied for by Cohen claimed use since September, 2009. The TMOB found that Fiedler had established prior use of the Fiedler marks and that the registration applied for by Cohen would share a significant degree of similarity in sound, appearance, and in the ideas suggested to a consumer, with the Fiedler marks. These findings supported the dismissal of the Cohen application by the TMOB based on a likelihood of confusion between the applied-for F CANCER & Design mark and the Fiedler marks. On judicial review of the TMOB decision before Justice Mactavish of the Federal Court, Cohen did not dispute the findings of the TMOB. Rather, Cohen sought to advance the new argument that the Fiedler marks are prohibited marks under Section 9(1)(j) of the Trade-marks Act, which bars the adoption of any mark that is, or so nearly resembles as to be likely to be mistaken for, a “scandalous, obscene or immoral word or device”. Essentially, Cohen now sought a ruling that no one could claim any right, registered or unregistered, to F--- CANCER, or any variation thereof. When reviewing the decision of an administrative decision maker, such as the TMOB, a Court has the discretion not to consider any issue that is being raised for the first time before the Court (i.e. any issue that was not first raised before the administrative decision maker). Generally, a Court will decline to hear any newly raised issue unless there is a reason it was not previously raised. This encourages the full determination of issues at first instance by the decision maker tasked with that determination. In this case, Parliament has tasked the TMOB as the expert panel with authority to decide questions relating to Section 9(1)(j) at first instance. Finding no valid reason why Cohen had not raised the issue at the TMOB, Justice Mactavish exercised her discretion not to consider the Section 9(1)(j) argument and dismissed the application. While Justice Mactavish made no binding statements on whether the Fiedler marks were actually enforceable, she did state that:

Indeed, the fact that Ms. Cohen’s ‘F CANCER’ mark made it through the approvals process suggests that such a mark may in fact be registrable.

Though the reasoning of Justice Mactavish here may be sound, no precedent binding future TMOB panels on how to handle ‘f-word marks’ is established by this case. And so this summary must end, not with a bang, but with a whimper: build a fulsome record by considering your position on all issues at first instance. Summary by: John Lucas