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F is for Fail: The Perils of Advancing New Arguments on Appeal of an Opposition Decision

October 17, 2014

By Jonathan Burkinshaw

Yael Cohen v. Susan Fiedler Incorporated 2014 FC 967 (October 14, 2014)

In an obscenity-laden decision, Justice Mactavish of the Federal Court has confirmed that the Court has discretion to not consider an issue raised for the first time on judicial review. This follows the position taken in other decisions that if an issue has not been raised by an opponent before the Opposition Board, it will be very unlikely to have it successfully considered on appeal.

Yael Cohen had applied to register the mark F Cancer & Design.

The application covered T-shirts and cancer charity services. The application was opposed by Susan Fiedler Incorporated, based on its prior use of the marks “F CANCER”, “FUCK CANCER”, “F* CANCER” and “F--- CANCER” with jewellery and cancer charity services. The opposition succeeded – the Opposition Board found the marks confusing and that the Fiedler marks had been used in Canada prior to Ms. Cohen’s mark. Surprisingly, the Opposition Board did not even comment on the apparent obscenity of the marks (presumably, the disease is obscene enough).

On appeal, Ms. Cohen did not dispute those findings, but instead raised an entirely new argument. She argued that the Opposition Board erred in recognizing the respondent’s common law rights to marks using the word “Fuck”, which she claimed was obscene, and therefore prohibited by paragraph 9(1)(j) of the Trademarks Act. That paragraph prohibits the adoption in connection with a business of any scandalous, obscene or immoral word or device.

If accepted, this argument would be fatal to Ms. Cohen’s own application. On appeal, she conceded that her goal was a ruling that Susan Fiedler Incorporated had no enforceable common law rights in its marks.

Justice Mactavish reviewed the jurisprudence on the Court’s discretion to entertain a new argument on judicial review: the discretion will not be exercised in favour of an application where the issue could have been but was not raised before the tribunal, especially where the issue raised for the first time on judicial review relates to the tribunal’s specialized function and area of expertise.

Ms. Cohen was unable to provide a valid reason as to why she could not have raised her section 9 argument before the Opposition Board. She claimed it arose from “further reflection” and from consideration of the Board’s reasons for its decision, which commented on the registrability of the word “Fuck”. Justice Mactavish rejected these arguments and found that Ms. Cohen was deemed to have knowledge of section 9.

Justice Mactavish held that the enforceability of the Fiedler marks was a question that could, and should have been decided by the Board. She dismissed Ms. Cohen’s application and notably granted an elevated award of costs.

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Jonathan Burkinshaw Jonathan Burkinshaw
B.A., M.A., J.D.
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