TWEAK-D INC. Appellant v. ATTORNEY GENERAL OF CANADA, 2023 FCA 238

Date: 20231206 Docket: A-119-23 Citation: 2023 FCA 238 CORAM: STRATAS J.A. LEBLANC J.A. BIRINGER J.A. BETWEEN: TWEAK-D INC. Appellant and ATTORNEY GENERAL OF CANADA Respondent Heard at Toronto, Ontario, on December 6, 2023. Judgment delivered from the Bench at Toronto, Ontario, on December 6, 2023. REASONS FOR JUDGMENT OF THE COURT BY: BIRINGER J.A. Date: 20231206 Docket: A-119-23 Citation: 2023 FCA 238 CORAM: STRATAS J.A. LEBLANC J.A. BIRINGER J.A. BETWEEN: TWEAK-D INC.

Appellant and ATTORNEY GENERAL OF CANADA Respondent REASONS FOR JUDGMENT OF THE COURT (Delivered from the Bench at Toronto, Ontario, on December 6, 2023). BIRINGER J.A. [ 1 ] The Registrar of Trademarks determined that the appellant’s word mark, TRIBAL CHOCOLATE, was not registrable because it was confusing with an already registered word mark, TRIBAL. The Federal Court ( per Manson J.) affirmed the Registrar’s decision: 2023 FC 427 .

The appellant appeals the Federal Court’s order. [ 2 ] In 2017, the appellant filed an application to register TRIBAL CHOCOLATE in connection with: Hair care preparations, namely shampoo, hair conditioner, hair gel, hair dyes, hair mousse, hair pomade, hair rinses, hair spray, leave-in hair treatments, namely leave-in hair conditioners and leave-in hair emollients, all intended for distribution to mass market retailers, drugstores, home shopping channels or internet retailers, but specifically excluding beauty salons and spas.

[3] The Registrar is required to refuse an application for registration of a trademark if satisfied that the trademark is confusing with analready registered trademark: Trademarks Act, R.S.C. 1985, c. T-13, paragraphs 37(1)(

b) and 12(1)(d). [4] The test for confusion is whether the "“casual consumer somewhat in a hurry”" would likely make the inference that the goods orservices associated with the trademarks emanated from the same source: subsection 6(2) of the Act; Mattel, Inc. v. 3894207 Canada Inc.,2006 SCC 22 at para. 2; Masterpiece Inc. v.

Alavida Lifestyles Inc., 2011 SCC 27 at para. 40. [5] In making this determination, the Registrar must consider all the surrounding circumstances, including the factors listed in subsection6(5) of the Act. [6] The Registrar refused the registration application for TRIBAL CHOCOLATE on the basis that it was confusing with the trademarkTRIBAL. TRIBAL had been registered in 2012 in association with, among other things, hair colourants and hair dyes.

The Registrar’sconclusion took into account the word marks’ highly similar appearance, the similar and overlapping nature of the goods, and the likelyoverlapping channels of trade. The appellant’s appeal of the Registrar’s decision to the Federal Court, pursuant to subsection 56(1) of theAct, was dismissed. [7] The standards of review from Housen v. Nikolaisen, 2002 SCC 33 apply to the Federal Court’s decision: Puma SE v. Caterpillar Inc.,2023 FCA 4 at para. 18; Miller Thomson LLP v. Hilton Worldwide Holding LLP, 2020 FCA 134 at paras. 41-42.

These standards arecorrectness for questions of law and palpable and overriding error for questions of fact and questions of mixed fact and law, unless thereis an extricable error of law. [8] The appellant alleges that the Federal Court and the Registrar made several errors. [9] First, relying on Society of Composers, Authors and Music Publishers of Canada v. Entertainment Software Association, 2022 SCC30, the appellant argues that the Federal Court erred in applying the Housen standards of review to the Registrar’s decision.

We disagree.SOCAN concerned reasonableness review in circumstances where a court and an administrative body have concurrent first instancejurisdiction over a legal issue in a statute. It did not affect the holding in Canada (Minister of Citizenship and Immigration) v. Vavilov,2019 SCC 65 at para. 37 that the Housen standards of review, in particular correctness review for questions of law, apply in a statutoryappeal.

The appeal of the Registrar’s decision to the Federal Court is a statutory appeal: subsection 56(1) of the Act. [10] Second, the appellant submits that the Federal Court erred in upholding the Registrar’s assessment of likely confusion. It takes issuewith the Court’s consideration of the state of the Register evidence and the co-existence agreement between the appellant and the ownerof TRIBAL. [11] Whether confusion is likely is a question of mixed fact and law with a significant factual component: Remo Imports Ltd. v. JaguarCars Ltd., 2007 FCA 258 at para. 52; Venngo Inc. v.

Concierge Connection Inc. (Perkopolis), 2017 FCA 96 at paras. 42-43; Masterpieceat para. 102. Accordingly, the standard of review is palpable and overriding error, unless the appellant can point to an extricable error oflaw. [12] The appellant submits that the Federal Court and Registrar erred in failing to reconcile the alleged inconsistency in priorregistrations. They say that TRIBAL CHOCOLATE is not more confusing with TRIBAL than TRIBAL is with the prior registered markTRIBAL INDULGENCES.

We reject this submission and agree with the reasoning of the Federal Court at para. 27. [13] It is generally irrelevant that a given mark may have been registered in the past; each application must be assessed on "“its intrinsicvalue, the proposed services, and its particular context”": Cliche v. Canada (Attorney General), 2012 FC 564 at para. 27, aff’d 2013FCA 8; Worldwide Diamond Trademarks Limited v. Canadian Jewellers Association, 2010 FC 309 at para. 80, aff’d 2010 FCA 326.Even if the Registrar has erred on a prior application, it is not required to perpetuate the error: Cliche at para. 31.

We reject theappellant’s reliance on Johnson (S.C.) and Son, Ltd. et al. v. Marketing International Ltd., (SCC), [1980] 1 S.C.R 99, asthere, the validity of the registration of the "“middle”" registered mark was questioned; there is no claim here that TRIBAL wasincorrectly registered. [14] The "“state of the Register”" may, in some cases, demonstrate a pattern of registrability of similar marks. We adopt the FederalCourt’s reasons at paras. 28-29 that inferences based on the Register should only be drawn if there is a large number of relevantregistrations and evidence of actual use: McDowell v.

Laverana GmbH & Co. KG, 2017 FC 327 at paras. 42-46; Tokai of Canada Ltd. v.Kingsford Products Company, LLC, 2021 FC 782 at para. 56; Puma at para. 48. Here, there were only four relevant registrations—TRIBAL, TRIBAL INDULGENCES, URBAN: TRIBE, and TRIBE—and no evidence of use: FC Reasons at paras. 6-8 and 29. TheFederal Court properly upheld the Registrar’s determination based on the state of the Register. [15] The appellant argues that the Federal Court erred by "“wholly discounting the significance”" of the co-existence agreement betweenthe appellant and the owner of TRIBAL. We disagree.

A registered trademark owner’s consent to the registration of a competingtrademark is not dispositive of registrability: Holding Benjamin et Edmond de Rothschild v. Canada (Attorney General), 2018 FC 258 atpara. 24. It is one factor that may be considered. [16] It was open to the Registrar to conclude that the co-existence agreement, while relevant, did not trump the other factors insubsection 6(5) of the Act: FC Reasons at para. 30. It is not the role of the Federal Court in a statutory appeal or this Court on a secondappeal to reweigh the evidence: Clorox Company of Canada, Ltd. v.

Chloretec S.E.C., 2020 FCA 76 at para. 38; Puma at para. 43. [17] We also agree with the Federal Court’s reasons at para. 30, endorsing the Registrar’s conclusion, that as a matter of first impressionand recollection the concurrent use of TRIBAL CHOCOLATE and TRIBAL for hair care products would likely lead to the inference thatthe products emanated from the same source. [18] The appellant has not shown that the Federal Court made a reversible error in upholding the Registrar’s decision. We dismiss theappeal with costs.

“Monica Biringer” J.A. FEDERAL COURT OF APPEAL NAMES OF COUNSEL AND SOLICITORS OF RECORD DOCKET: A-119-23 STYLE OF CAUSE: TWEAK-D INC. v. ATTORNEY GENERAL OF CANADA PLACE OF HEARING: Toronto, Ontario DATE OF HEARING: December 6, 2023 REASONS FOR JUDGMENT OF THE COURT BY: STRATAS J.A. LEBLANC J.A. BIRINGER J.A. DELIVERED FROM THE BENCH BY: BIRINGER J.A. APPEARANCES : Michele Ballagh Luke McIvor For The Appellant Adrian Zita-Bennett For The Respondent SOLICITORS OF RECORD : Blaze IP Hamilton, Ontario For The Appellant Shalene Curtis-Micallef Deputy Attorney General of Canada For The Respondent